602.08 Inventor and Application Information
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602.08(a) Inventor Bibliographic Information
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602.08(b) Inventor Signature and Name
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I. SIGNATURE REQUIREMENT - EXECUTION OF INVENTOR’S OATHS OR DECLARATIONS
An oath or declaration under 37 CFR 1.63 by each actual inventor must be presented.
- Each inventor need not execute the same oath or declaration.
- For applications filed before September 16, 2012, 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 (by combining the signature pages).
It is improper for an applicant to sign an oath or declaration which is not attached to or does not identify "the application (e.g., a specification and drawings) to which it is directed."
II. SIGNATURE REQUIREMENT - EXECUTION OF OATH OR DECLARATION ON BEHALF OF INVENTOR
A. For applications filed on or after September 16, 2012
The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided under 37 CFR 1.64.
- Only inventors can execute an oath or declaration under 37 CFR 1.63.
- The applicant for patent may execute a substitute statement under 37 CFR 1.64 in lieu of an oath or declaration under the permitted circumstances.
B. For applications filed before September 16, 2012
The oath or declaration required by pre- AIA must be signed by all of the actual inventors, except under limited circumstances.
- Joint inventors can sign on behalf of an inventor who cannot be reached or refuses to join.
- The legal representative of a deceased or incapacitated inventor can sign on behalf of the inventor.
- Pre-AIA provides that a party with proprietary interest in the invention claimed in an application can sign on behalf of the inventor, if the inventor cannot be reached or refuses to join in the filing of the application.
III. INVENTOR’S NAME
For nonprovisional applications filed on or after September 16, 2012, the inventor must be identified by his or her legal name.
For nonprovisional applications filed before September 16, 2012, each inventor must be identified by his or her full name, including the family name, and at least one given name without abbreviation together with any other given name or initial in the oath or declaration.
For example, if the applicant's full name is “John Paul Doe,” either “John P. Doe” or “J. Paul Doe” is acceptable.
A. Correction of Name
In an application where the name is typewritten with a middle name or initial, but the signature does not contain such middle name or initial, the typewritten version of the name will be used as the inventor’s name for the purposes of the application and any patent that may issue from the application.
Effective September 16, 2012, any request to have the name of the inventor or a joint inventor in a nonprovisional application corrected or updated, including correction of a typographical or transliteration error in the spelling of an inventor’s name, must be by way of a request under 37 CFR 1.48(f).
- A request under 37 CFR 1.48(f) must include (1) an application data sheet that identifies each inventor by his or her legal name, and (2) the processing fee.
If the error in the inventor’s name is not detected until after the payment of the issue fee, because amendments are not permitted after the payment of the issue fee, either
- The application must be withdrawn from issue and a request under 37 CFR 1.48(f) to correct the inventor’s name submitted with a request for continued examination (RCE) under 37 CFR 1.114, or
- A certificate of correction, along with a petition under 37 CFR 1.182, must be filed after the patent issues requesting correction of inventor’s name.
Effective September 16, 2012, any request to correct or change inventorship, or correct or update the name of the inventor or a joint inventor, in a provisional application must be made pursuant to 37 CFR 1.48(d).
- 37 CFR 1.48(d) requires a request signed by the proper party, that identifies each inventor by his or her legal name, and the processing fee.
B. Change of Name
Effective September 16, 2012, when an inventor’s name has been changed after the nonprovisional application has been filed and the inventor desires to change his or her name on the application, he or she must submit a request under 37 CFR 1.48(f), including an application data sheet that identifies each inventor by his or her legal name and the processing fee.
- Since amendments are not permitted after the payment of the issue fee, a request under 37 CFR 1.48(f) to change the name of the inventor cannot be granted if filed after the payment of the issue fee.
If the application is assigned, applicant should submit a corrected assignment document along with a cover sheet and the recording fee to the Assignment Division for a change in the assignment record.
The corrected ADS must identify the information being changed.
C. Order of Joint Inventor Names
For applications filed on or after September 16, 2012, the order of names of joint patentees in the heading of the patent is taken from the order in which the names appear in the application data sheet if submitted before or with the inventor’s oath or declaration.
For applications filed before September 16, 2012, the order of names of joint patentees in the heading of the patent is taken from the order in which the typewritten names appear in the original oath or declaration.
602.08(c) Identification of Application
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The following combination of information supplied in an oath or declaration filed on the application filing date with a specification are acceptable as minimums for identifying the application and compliance with any one of the items below will be accepted as complying with the identification requirement of 37 CFR 1.63:
- name of inventor(s), and reference to an attached specification or application which is both attached to the oath or declaration at the time of execution and submitted with the oath or declaration on filing;
- name of inventor(s), and attorney docket number which was on the specification as filed; or
- name of inventor(s), and title of the invention which was on the specification as filed.
Filing dates are granted on applications filed without an inventor’s oath or declaration.
The following combinations of information supplied in an oath or declaration filed after the filing date of the application are acceptable as minimums for identifying the application and compliance with any one of the items below will be accepted as complying with the identification requirement of 37 CFR 1.63:
- (A) application number (consisting of the series code and the serial number, e.g., 08/123,456);
- (B) serial number and filing date;
- (C) international application number of an international application;
- (D) international registration number of an international design application;
- (E) attorney docket number which was on the specification as filed;
- (F) title of the invention which was on the specification as filed and reference to an attached specification or application which is both attached to the oath or declaration at the time of execution and submitted with the oath or declaration; or
- (G) title of the invention which was on the specification as filed and accompanied by a cover letter accurately identifying the application for which it was intended by either the application number (consisting of the series code and the serial number, e.g., 08/123,456), or serial number and filing date. Absent any statement(s) to the contrary, it will be presumed that the application filed in the USPTO is the application which the inventor(s) executed by signing the oath or declaration.
602.09 Joint Inventors
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(a) JOINT INVENTIONS.—When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
(b) OMITTED INVENTOR.—If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.
(c) CORRECTION OF ERRORS IN APPLICATION.—Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, the Director may permit the application to be amended accordingly, under such terms as he prescribes.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 116 for the law otherwise applicable.]
When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
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(b) Inventors may apply for a patent jointly even though
(1) They did not physically work together or at the same time;
(2) Each inventor did not make the same type or amount of contribution; or
(3) Each inventor did not make a contribution to the subject matter of every claim of the application.
(c) ) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.
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Joint inventors do not have to separately "sign the application" but must apply jointly and make the required oath or declaration by signing the same.
