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602.01 Inventorship [R-07.2015]

See MPEP § 602.09 for a discussion of joint inventorship. See MPEP § 2137.01 for the definition of, and requirements for, inventorship.

I. Naming Inventorship in application filed on or after September 16, 2012

[Editor Note: See subsection II., below, for naming inventorship in applications filed before September 16, 2012.]

37 C.F.R. 1.41 Applicant for patent.

(a) An application must include, or be amended to include, the name of the inventor for any invention claimed in the application.
(b) 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 in accordance with § 1.76 filed before or concurrently with the inventor's oath or declaration. If an 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 provided for in §§ 1.53(d)(4) and 1.63(d). 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 § 1.48. If neither an application data sheet nor the inventor's oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(b), unless the applicant files a paper, including the processing fee set forth in § 1.17(i), supplying the name or names of the inventor or joint inventors.
(c) The inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by § 1.51(c)(1). Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any correction of inventorship must be pursuant to § 1.48. If a cover sheet as prescribed by § 1.51(c)(1) 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 pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying the name or names of the inventor or joint inventors.
(d) In a nonprovisional application under 35 U.S.C. 111(a) filed without an application data sheet or the inventor’s oath or declaration, or in a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name and residence of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
(e) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371. Unless the initial submission under 35 U.S.C. 371 is accompanied by an application data sheet in accordance with § 1.76 setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis .
(f) The inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). Any correction of inventorship must be pursuant to § 1.48.

An application must include, or be amended to include, the name of the inventor for any invention claimed in the application (the inventorship). See 35 U.S.C. 115(a) and 37 CFR 1.41(a).

As provided in 37 CFR 1.41(b), the applicant may name the inventorship of a nonprovisional application under 35 U.S.C. 111(a) in the application data sheet in accordance with 37 CFR 1.76 or the inventor’s oath or declaration. 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 in accordance with 37 CFR 1.76 filed before or concurrently with the inventor’s oath or declaration. An application data sheet must be signed to comply with 37 CFR 1.76. An unsigned application data sheet is treated as only a transmittal letter. See 37 CFR 1.76(e). If an 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 provided in 37 CFR 1.53(d)(4) (continued prosecution applications for designs) and 37 CFR 1.63(d) (continuing applications). 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). If neither an application data sheet nor inventor’s oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to 37 CFR 1.53(b), unless the applicant files a paper, including the processing fee set forth in 37 CFR 1.17(i), supplying the name or names of the inventor or joint inventors.

Applicants who wish to take advantage of the ability to name the inventors in an application data sheet rather than the inventor’s oath or declaration should take care to ensure that an application data sheet under 37 CFR 1.76 that is signed in compliance with 37 CFR 1.33(b) is present on filing, or at least prior to the filing of any inventor’s oath or declaration in the application. If an inventor’s oath or declaration is filed in the application prior to the filing of an application data sheet under 37 CFR 1.76 that is signed in compliance with 37 CFR 1.33(b), the inventorship named in the inventor’s oath or declaration controls. For example, if an inventor’s oath or declaration naming only inventor "A" is present on filing without an accompanying application data sheet, and a signed application data sheet is filed naming inventors "A" and "B" is subsequently filed in the application, the application will be treated as naming only inventor "A" (the inventor provided in the inventor’s oath or declaration) until the inventorship is corrected under 37 CFR 1.48(a).

As provided in 37 CFR 1.41(c), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1). Once a cover sheet as prescribed by 37 CFR 1.51(c)(1) is filed in a provisional application, any correction of inventorship must be pursuant to 37 CFR 1.48. If a cover sheet as prescribed by 37 CFR 1.51(c)(1) 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 pursuant to 37 CFR 1.53(c), unless the applicant files a paper including the processing fee set forth in 37 CFR 1.17(q), supplying the name or names of the inventor or joint inventors.

37 CFR 1.41(d) provides that in either a nonprovisional application under 35 U.S.C. 111(a) filed without an application data sheet or the inventor’s oath or declaration, or in a provisional application filed without a cover sheet as prescribed by 37 CFR 1.51(c)(1), the name and residence of each person believed to be an actual inventor should be provided when the application papers filed pursuant to 37 CFR 1.53(b) or (c) are filed. Naming the individuals known to be inventors or the persons believed to be the inventors may enable the Office to identify the application, if applicant does not know the application number. Where no inventor(s) is known and applicant cannot name a person believed to be an inventor on filing, the Office requests that an alphanumeric identifier be submitted for the application. The use of very short identifiers should be avoided to prevent confusion. Without supplying at least a unique identifying name the Office may have no ability or only a delayed ability to match any papers submitted after filing of the application and before issuance of an identifying application number with the application file. Any identifier used that is not an inventor’s name should be specific, alphanumeric characters of reasonable length, and should be presented in such a manner that it is clear to application processing personnel what the identifier is and where it is to be found. Failure to apprise the Office of an application identifier such as the names of the inventors or the alphanumeric identifier being used may result in applicants having to resubmit papers that could not be matched with the application and proof of the earlier receipt of such papers where submission was time dependent.

37 CFR 1.41(e) provides that the inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with 37 CFR 1.76 filed with the initial submission under 35 U.S.C. 371. Thus, the applicant in an international application may change inventorship as to the U.S. at the time of national stage entry by simply filing an application data sheet in accordance with 37 CFR 1.76 with the initial submission under 35 U.S.C. 371 naming the inventor or joint inventors. Unless the initial submission under 35 U.S.C. 371 is accompanied by an application data sheet in accordance with 37 CFR 1.76 setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis . 37 CFR 1.41(e) does not provide the ability to name the inventor or joint inventors via the inventor’s oath or declaration even when an application data sheet in accordance with 37 CFR 1.76 is not provided.

37 CFR 1.41(f) was added to set forth the inventorship in an international design application designating the United States. Specifically, the inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). 37 CFR 1.41(f) further provides that any correction of inventorship must be pursuant to 37 CFR 1.48.

II. Naming Inventorship in an Application filed Before September 16, 2012

[Editor Note: See subsection I., above, for naming inventorship in applications filed on or after September 16, 2012.]

Pre-AIA 37 CFR 1.41(a)(1) 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 provided for in 37 CFR 1.53(d)(4) and pre-AIA 37 CFR 1.63(d). See MPEP §§ 602.08(b) and 605.02 for additional information.

III. Correction of Inventorship

For correction of inventorship, see MPEP § 602.01(c) et seq. Note that requests to correct the inventorship under 37 CFR 1.48 filed on or after September 16, 2012 (regardless of the application filing date) are treated by OPAP. If the request is granted, OPAP will correct the Office records and send a corrected filing receipt.

602.01(a) Inventor’s Oath or Declaration in Application Filed On or After September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 602.01(b) for information pertaining to an inventor's oath or declaration in applications filed before September 16, 2012.]

35 U.S.C. 115 Inventor’s oath or declaration.

(a) NAMING THE INVENTOR; INVENTOR’S OATH OR DECLARATION.—An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.
(b) REQUIRED STATEMENTS.—An oath or declaration under subsection (a) shall contain statements that—
- (1) the application was made or was authorized to be made by the affiant or declarant; and
- (2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.
(c) ADDITIONAL REQUIREMENTS.—The Director may specify additional information relating to the inventor and the invention that is required to be included in an oath or declaration under subsection (a).
(d) SUBSTITUTE STATEMENT.—
- (1) IN GENERAL.—In lieu of executing an oath or declaration under subsection (a), the applicant for patent may provide a substitute statement under the circumstances described in paragraph (2) and such additional circumstances that the Director may specify by regulation.
- (2) PERMITTED CIRCUMSTANCES.—A substitute statement under paragraph (1) is permitted with respect to any individual who—
  - (A) is unable to file the oath or declaration under subsection (a) because the individual—
    - (i) is deceased;
    - (ii) is under legal incapacity; or
    - (iii) cannot be found or reached after diligent effort; or
  - (B) is under an obligation to assign the invention but has refused to make the oath or declaration required under subsection (a).
- (3) CONTENTS.—A substitute statement under this subsection shall—
  - (A) identify the individual with respect to whom the statement applies;
  - (B) set forth the circumstances representing the permitted basis for the filing of the substitute statement in lieu of the oath or declaration under subsection (a); and
  - (C) contain any additional information, including any showing, required by the Director.
(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT OF RECORD.—An individual who is under an obligation of assignment of an application for patent may include the required statements under subsections (b) and (c) in the assignment executed by the individual, in lieu of filing such statements separately.
(f) TIME FOR FILING.—The applicant for patent shall provide each required oath or declaration under subsection (a), substitute statement under subsection (d), or recorded assignment meeting the requirements of subsection (e) no later than the date on which the issue fee is paid.
(g) EARLIER-FILED APPLICATION CONTAINING REQUIRED STATEMENTS OR SUBSTITUTE STATEMENT.—
- (1) EXCEPTION.—The requirements under this section shall not apply to an individual with respect to an application for patent in which the individual is named as the inventor or a joint inventor and that claims the benefit under section 120, 121, 365(c), or 386(c) of the filing of an earlier-filed application, if—
  - (A) an oath or declaration meeting the requirements of subsection (a) was executed by the individual and was filed in connection with the earlier-filed application;
  - (B) a substitute statement meeting the requirements of subsection (d) was filed in connection with the earlier filed application with respect to the individual; or
  - (C) an assignment meeting the requirements of subsection (e) was executed with respect to the earlier-filed application by the individual and was recorded in connection with the earlier-filed application.
- (2) COPIES OF OATHS, DECLARATIONS, STATEMENTS, OR ASSIGNMENTS.—Notwithstanding paragraph (1), the Director may require that a copy of the executed oath or declaration, the substitute statement, or the assignment filed in connection with the earlier-filed application be included in the later-filed application.
(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; FILING ADDITIONAL STATEMENTS.—
- (1) IN GENERAL.—Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement at any time. If a change is made in the naming of the inventor requiring the filing of 1 or more additional statements under this section, the Director shall establish regulations under which such additional statements may be filed.
- (2) SUPPLEMENTAL STATEMENTS NOT REQUIRED.—If an individual has executed an oath or declaration meeting the requirements of subsection (a) or an assignment meeting the requirements of subsection (e) with respect to an application for patent, the Director may not thereafter require that individual to make any additional oath, declaration, or other statement equivalent to those required by this section in connection with the application for patent or any patent issuing thereon.
- (3) SAVINGS CLAUSE.—A patent shall not be invalid or unenforceable based upon the failure to comply with a requirement under this section if the failure is remedied as provided under paragraph (1).
(i) ACKNOWLEDGMENT OF PENALTIES.—Any declaration or statement filed pursuant to this section shall contain an acknowledgment that any willful false statement made in such declaration or statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.

37 C.F.R. 1.63 Inventor's oath or declaration.

(a) 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 for in § 1.64 . An oath or declaration under this section must:
- (1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;
- (2) Identify the application to which it is directed;
- (3) Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and
- (4) State that the application was made or was authorized to be made by the person executing the oath or declaration.
(b) Unless the following information is supplied in an application data sheet in accordance with § 1.76, the oath or declaration must also identify:
- (1) Each inventor by his or her legal name; and
- (2) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
(c) A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56. There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing.
(d)
- (1) A newly executed oath or declaration under § 1.63, or substitute statement under § 1.64 , is not required under §§ 1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64 , was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.
- (2) The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.
- (3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64 .
(e)
- (1) An assignment may also serve as an oath or declaration required by this section if the assignment as executed:
  - (i) Includes the information and statements required under paragraphs (a) and (b) of this section; and
  - (ii) A copy of the assignment is recorded as provided for in part 3 of this chapter.
- (2) Any reference to an oath or declaration under this section includes an assignment as provided for in this paragraph.
(f) With respect to an application naming only one inventor, any reference to the inventor's oath or declaration in this chapter includes a substitute statement executed under § 1.64 . With respect to an application naming more than one inventor, any reference to the inventor's oath or declaration in this chapter means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless otherwise clear from the context.
(g) An oath or declaration under this section, including the statement provided for in paragraph (e) of this section, must be executed (i.e., signed) in accordance either with § 1.66 or with an acknowledgment that any willful false statement made in such declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.
(h) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1) will be placed in the file record of the application or patent, but may not necessarily be reviewed by the Office. Any request for correction of the named inventorship must comply with § 1.48 in an application and § 1.324 in a patent.

I. IDENTITY OF INVENTOR(S), APPLICATION, AND REQUIRED STATEMENTS

The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in 37 CFR 1.64 . See 37 CFR 1.63(a) and 35 U.S.C. 115. An oath or declaration must: (1) identify the inventor or joint inventor executing the oath or declaration by his or her legal name; (2) identify the application to which it is directed; (3) include a statement the person executing the oath or declaration believes the named inventor or joint inventors to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and (4) state that the application was made or authorized to be made by the person executing the oath or declaration. Items (3) and (4) above are requirements of 35 U.S.C. 115(a) and (b).

A. INVENTOR NAME AND MAILING ADDRESS

The requirements that an oath or declaration must identify the inventor or joint inventor executing the oath or declaration by his or her legal name and identify the application to which it is directed are necessary for the Office to ensure compliance with the requirement of 35 U.S.C. 115(a). Specifically, 35 U.S.C. 115(a) requires that each individual who is the inventor or a joint inventor of a claimed invention in an application for patent has executed an oath or declaration in connection with the application (except as provided for in 35 U.S.C. 115 ). See MPEP § 602.08(b) for additional information pertaining to inventor names.

Unless such information is supplied in an application data sheet in accordance with 37 CFR 1.76, the oath or declaration must also identify: (1) each inventor by his or her legal name; (2) a mailing address where the inventor or each joint inventor customarily receives mail; and (3) a residence for each inventor or joint inventor who lives at a location which is different from where the inventor or joint inventor customarily receives mail. See 37 CFR 1.63(b).

For nonprovisional international design applications, 37 CFR 1.1021(d)(3) provides that the requirement in 37 CFR 1.63(b) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, will be considered satisfied by the presentation of such information in the international design application prior to international registration.

See also MPEP § 602.08(a) for additional details regarding inventor bibliographic information.

If applicant files an application data sheet (ADS) that identifies each inventor by his or her legal name, in accordance with 37 CFR 1.76, the applicant is not required to name each inventor in a single oath or declaration. This permits each joint inventor to execute an oath or declaration stating only that the joint inventor executing the oath or declaration is an original joint inventor of the claimed invention in the application for which the oath or declaration is being submitted. To be in accordance with 37 CFR 1.76, the application data sheet must be signed in compliance with 37 CFR 1.33(b). An unsigned application data sheet will be treated only as a transmittal letter.

B. IDENTIFICATION OF APPLICATION

See MPEP § 602.08(c) for the minimum information necessary to identify the application to which an oath or declaration under 37 CFR 1.63 is directed.

C. REQUIRED STATEMENTS

An oath or declaration under 37 CFR 1.63 in an application filed on or after September 16, 2012 is no longer required to contain the "reviewed and understands" clause and "duty to disclose" clause of pre-AIA 37 CFR 1.63(b)(2) and (b)(3). However, 37 CFR 1.63 still requires that a person executing an oath or declaration review and understand the contents of the application, and be aware of the duty to disclose under 37 CFR 1.56. See 37 CFR 1.63(c). There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute (i.e., understand) the document that the person is executing.

II. ASSIGNMENT-STATEMENT AS OATH OR DECLARATION

37 CFR 1.63(e) implements the provisions of 35 U.S.C. 115(e). An assignment may also serve as an oath or declaration required by 37 CFR 1.63 if the assignment: (1) includes the information and statements required under 37 CFR 1.63(a) and (b); and (2) a copy of the assignment is recorded as provided for in 37 CFR part 3. The assignment, including the information and statements required under 37 CFR 1.63(a) and (b), must be executed by the individual who is under the obligation of assignment. Any reference to an oath or declaration includes an assignment as provided for in 37 CFR 1.63(e).

Applicants should be mindful that 37 CFR 3.31 requires a conspicuous indication, such as by use of a check-box on the assignment cover sheet, to alert the Office that an assignment submitted with an application is being submitted for a dual purpose: recording in the assignment database, such as to support a power of attorney, and for use in the application as the inventor’s oath or declaration. Assignments cannot be recorded unless an application number is provided against which the assignment is to be recorded. When filing an application on paper, if an assignment is submitted for recording along with the application, the assignment is separated from the paper application after the application is assigned an application number and is forwarded to the Assignment Recordation Branch for recording in its database. The assignment does not become part of the application file. If the applicant indicates that an assignment-statement is also an oath or declaration, the Office will scan the assignment into the Image File Wrapper (IFW) file for the application before forwarding it to the Assignment Recordation Branch.

For EFS-Web filing of application papers, EFS-Web does not accept assignments for recording purposes when filing an application. Assignments submitted via EFS-Web will be made of record in the application, and will not be forwarded to the Assignment Recordation Branch for recordation by the Office. Recording of assignments may only be done electronically in EPAS (Electronic Patent Assignment System). If an applicant files the assignment-statement for recording via EPAS and utilizes the check-box, the Office will place a copy of the assignment-statement in the application file.

III. EXECUTION OF INVENTOR’S OATH OR DECLARATION

With respect to an application naming more than one inventor, any reference to the inventor’s oath or declaration in 37 CFR chapter I means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless it is otherwise clear from the context. Thus, any requirement in 37 CFR chapter I for the inventor’s oath or declaration with respect to an application naming more than one inventor is met if an oath or declaration under 37 CFR 1.63, an assignment-statement under 37 CFR 1.63(e), or a substitute statement under 37 CFR 1.64 executed by or with respect to each joint inventor is filed. See 37 CFR 1.63(f).

An oath or declaration under 37 CFR 1.63, including the assignment-statement provided for in 37 CFR 1.63(e), must be executed (i.e., signed) in accordance either with 37 CFR 1.66, or with an acknowledgement that any willful false statement made in such declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both. See 37 CFR 1.63(g) and 35 U.S.C. 115(i). The inventor’s oath or declaration must be executed (i.e., signed) by the inventor or the joint inventors, unless the inventor’s oath or declaration is a substitute statement under 37 CFR 1.64, which must be signed by the applicant, or an assignment-statement under 37 CFR 1.63(e), which must be signed by the inventor who is under the obligation of assignment of the patent application.

See MPEP § 602.08(b) for additional information regarding the execution of the inventor’s oath or declaration.

See 35 U.S.C. 115(g), 37 CFR 1.63(d) and MPEP § 602.05(a) regarding the use of copies of inventor’s oaths or declarations in continuing applications.

35 U.S.C. 115(h)(1) provides that any person making a statement under this section may at any time "withdraw, replace, or otherwise correct the statement at any time." 37 CFR 1.63(h) provides that an oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1) will be placed in the file record of the application or patent, but may not necessarily be reviewed by the Office.

IV. FORMS

Forms PTO/AIA/01 through PTO/AIA/09 may be used when submitting the inventor’s oath or declaration in an application filed on or after September 16, 2012. These forms and an "AIA Inventor's Oath or Declaration Quick Reference Guide" are available on the USPTO website at www.uspto.gov/patent/forms/forms-patent- applications-filed-or-after-september-16-2012.

602.01(b) Inventor’s Oath or Declaration in Application Filed Before September 16, 2012 [R-11.2013]

[Editor Note: See MPEP § 602.01(a) for information pertaining to an inventor’s oath or declaration in applications filed on or after September 16, 2012.]

35 U.S.C. 115 (pre-AIA) Oath of applicant.

The applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent; and shall state of what country he is a citizen. Such oath may be made before any person within the United States authorized by law to administer oaths, or, when made in a foreign country, before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority is proved by certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. Such oath is valid if it complies with the laws of the state or country where made. When the application is made as provided in this title by a person other than the inventor, the oath may be so varied in form that it can be made by him. For purposes of this section, a consular officer shall include any United States citizen serving overseas, authorized to perform notarial functions pursuant to section 1750 of the Revised Statutes, as amended (22 U.S.C. 4221).

37 C.F.R. 1.63 (pre-AIA) Oath or declaration.

(a) An oath or declaration filed under § 1.51(b)(2) as a part of a nonprovisional application must:
- (1) Be executed, i.e., signed, in accordance with either § 1.66 or § 1.68. There is no minimum age for a person to be qualified to sign, but the person must be competent to sign, i.e., understand the document that the person is signing;
- (2) Identify each inventor by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial;
- (3) Identify the country of citizenship of each inventor; and
- (4) State that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.
(b) In addition to meeting the requirements of paragraph (a) of this section, the oath or declaration must also:
- (1) Identify the application to which it is directed;
- (2) State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims, as amended by any amendment specifically referred to in the oath or declaration; and
- (3) State that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.
(c) Unless such information is supplied on an application data sheet in accordance with § 1.76, the oath or declaration must also identify:
- (1) The mailing address, and the residence if an inventor lives at a location which is different from where the inventor customarily receives mail, of each inventor; and
- (2) Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made pursuant to § 1.55, and any foreign application having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.
(d)
- (1) A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
  - (i) The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section;
  - (ii) The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application;
  - (iii) The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and
  - (iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application.
- (2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application.
- (3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under § 1.47, the copy of the executed oath or declaration for such prior application must be accompanied by:
  - (i) A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under § 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and
  - (ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application.
- (4) Where the power of attorney or correspondence address was changed during the prosecution of the prior application, the change in power of attorney or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney or correspondence address during the prosecution of the prior application.
- (5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
(e) A newly executed oath or declaration must be filed in any continuation-in-part application, which application may name all, more, or fewer than all of the inventors named in the prior application.

The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in pre-AIA 37 CFR 1.64. See pre-AIA 37 CFR 1.63(a) and pre-AIA 35 U.S.C. 115. When joint inventors execute separate oaths or declarations, each oath or declaration should make reference to the fact that the affiant is a joint inventor together with each of the other inventors indicating them by name. This may be done by stating that he or she does verily believe himself or herself to be the original, first and joint inventor together with "A" or "A & B, etc." as the facts may be.

Pre-AIA 37 CFR 1.63(a) and (b) set forth the basic requirements for an oath or declaration in an application filed before September 16, 2012.

See MPEP § 602.08 et seq. for details specific to the required inventor bibliographic information, signature, and name, and to the identification of the application to which the oath or declaration applies.

Unless included in an application data sheet, oaths and declarations must make reference to any foreign application for patent (or inventor’s certificate) for which priority is claimed and any foreign application filed prior to the filing date of an application on which priority is claimed. See pre-AIA 37 CFR 1.63(c)(2).

The applicant is required to recite all foreign applications filed prior to the application on which priority is claimed. It is required to give the foreign application number and name of the country or office in which filed, as well as the filing date of each foreign application to which priority is claimed.

See MPEP § 602.03 for information pertaining to defective oaths or declarations.

Forms PTO/SB/01 and PTO/SB/01A may be used when submitting the inventor’s oath or declaration in an application filed before September 16, 2012.

Declaration for Utility or Design Patent Application - (37 CFR 1.63)

DECLARATION - Utility or Design Patent Application

DECLARATION (37 CFR 1.63) FOR UTILITY OR DESIGN APPLICATION USING AN APPLICATION DATA SHEET (37 CFR 1.76)

602.01(c) Correction of Inventorship, Name of Inventor, and Order of Names in an Application [R-07.2015]

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.

A. Applications Filed on or After September 16, 2012

As provided in 37 CFR 1.41(b), 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 in accordance with 37 CFR 1.76 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).

See MPEP § 602.01, subsection I for information specific to naming inventorship in applications filed on or after September 16, 2012. See MPEP § 601.01(a), subsection II for information regarding completion of an nonprovisional application subsequent to the filing date pursuant to 37 CFR 1.53(f) (e.g., because the inventor’s oath or declaration was not present on filing date). See MPEP § 601.01(b) for information regarding completion of a provisional application subsequent to the filing date.

B. Applications Filed Before September 16, 2012

Pre-AIA 37 CFR 1.41(a)(1) 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. See Pre-AIA 37 CFR 1.41(a)(1).

As provided in pre-AIA 37 CFR 1.41(a)(2), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1).

II. REQUESTS FOR CORRECTION OF INVENTORSHIP UNDER 37 CFR 1.48

Correction of inventorship in an application is permitted by amendment under 35 U.S.C. 116, which is implemented by 37 CFR 1.48.

For requests for correction of inventorship filed under 37 CFR 1.48(a) or (d) on or after September 16, 2012 (without regard to the filing date of the application), see MPEP § 602.01(c)(1).

For requests filed on or after September 16, 2012, under 37 CFR 1.48(f) to correct or update inventor names, or to change the order of inventor names, see MPEP § 602.01(c)(2). Note that requests under 37 CFR 1.48 filed on or after September 16, 2012 will be handled by the Office of Patent Application Processing (OPAP).

For requests for correction of inventorship filed before September 16, 2012 (without regard to the filing date of the application), see MPEP § 602.01(c)(3).

37 CFR 1.48 does not apply to reissue applications as is noted in its title, whether correcting an inventorship error in the patent to be reissued or in the reissue application itself. Where an error in inventorship in a patent is to be corrected via a reissue application, see 37 CFR 1.171 - 37 CFR 1.175 and MPEP § 1412.04. Where such an error is to be corrected via a certificate of correction under 37 CFR 1.324, see MPEP § 1481. See 37 CFR 1.48(i) for correction of inventorship in interferences and contested cases before the Patent Trial and Appeal Board.

Although 37 CFR 1.48 does not contain a diligence requirement for filing the request, once an inventorship error is discovered, timeliness requirements under 37 CFR 1.116 and 37 CFR 1.312 apply.

A request under 37 CFR 1.48 will not be required:

(A)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

(B)Where a court has issued an order under 35 U.S.C. 256 for correction of the inventorship of a patent. Such request should be submitted directly to the Certificate of Correction Division along with form PTO/SB/44 (see MPEP § 1485).

III. CORRECTION OF INVENTORSHIP BY FILING CONTINUING APPLICATION

Correction of inventorship may also be obtained by the filing of a continuing application under 37 CFR 1.53 without the need for filing a request under 37 CFR 1.48, although it should be noted that the requirements for a request under 37 CFR 1.48 filed on or after September 16, 2012 are minimal.

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. 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, 37 CFR 1.32(e) provides that 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. This provision does not preclude a practitioner from acting in a representative capacity pursuant to 37 CFR 1.34, if applicable.

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 statement, signed by a 37 CFR 1.33(b) party, 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.

602.01(c)(1) Correction of Inventorship in an Application – Request Filed On or After September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 602.01(c)(3) for information about correction of inventorship for requests filed before September 16, 2012.]

37 C.F.R. 1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application.

(a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41 must include:
- (1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name; and
- (2) The processing fee set forth in § 1.17(i).
(b) Inventor's oath or declaration for added inventor: An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.
(c) Any request to correct or change the inventorship under paragraph (a) of this section filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in § 1.17(d), unless the request 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.
(d) Provisional application. Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any request to correct or change the inventorship must include:
- (1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and
- (2) The processing fee set forth in § 1.17(q).
(e) Additional information may be required. The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.

*****

Requests for correction of inventorship under 37 CFR 1.48 filed on or after September 16, 2012 will be handled by the Office of Patent Application Processing (OPAP).

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. See MPEP § 602.08(b), subsection III, for details regarding naming inventorship in an application filed on or after September 16, 2012.

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 (see 37 CFR 1.76(b)(1) ) and the processing fee set forth in 37 CFR 1.17(i). The application data sheet submitted with a request under 37 CFR 1.48(a) must identify the information being changed with underlining for insertions and strike-through or brackets for text removed.

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 as required by 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, 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. See MPEP § 602.01(a). A substitute statement in compliance with 37 CFR 1.64 is only available for applications filed on or after September 16, 2012. See MPEP § 604 for the requirements for substitute statements.

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. See MPEP § 602.01(b).

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

37 CFR 1.48(c) provides that the fee set forth in 37 CFR 1.17(d) (in addition to the processing 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 as prescribed by 37 CFR 1.51(c)(1). 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 as prescribed by 37 CFR 1.51(c)(1) 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 pursuant 37 CFR 1.53(c), unless the applicant files a paper, including the processing fee set forth in 37 CFR 1.17(q), 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: (1) 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 (2) the fee set forth in 37 CFR 1.17(q). When an inventor is being added, applicants should also file a corrected application data sheet or a new cover sheet providing the residence of all inventors. See 37 CFR 1.51(c). 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. See MPEP § 213.

602.01(c)(2) Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 602.01(c)(3) for a discussion of the requirements for requests to correct or update inventor name filed before September 16, 2012.]

37 C.F.R. 1.48 Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.

*****

(f) Correcting or updating the name of an inventor: 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:
- (1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name in the desired order; and
- (2) The processing fee set forth in § 1.17(i).

*****

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: (1) an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name in the desired order (identifying the information that is being changed as required by 37 CFR 1.76(c)(2) ); and (2) the processing fee set forth in 37 CFR 1.17(i). In addition to the corrected application data sheet, the request should also identify the desired inventor name change.

602.01(c)(3) Correction of Inventorship in an Application – Request Under 37 CFR 1.48 Filed Prior to September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 602.01(c)(1) for requests for correction of inventorship filed on or after September 16, 2012 and MPEP § 602.01(c)(2) for a discussion of the requirements for requests to correct or update inventor name filed on or after September 16, 2012.]

I. GENERAL INFORMATION

37 C.F.R. 1.48 (pre-AIA) Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.

(a) Nonprovisional application after oath/declaration filed. If the inventive entity is set forth in error in an executed § 1.63 oath or declaration in a nonprovisional application, and such error arose without any deceptive intention on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, the inventorship of the nonprovisional application may be amended to name only the actual inventor or inventors. Amendment of the inventorship requires:
- (1) A request to correct the inventorship that sets forth the desired inventorship change;
- (2) A statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part;
- (3) An oath or declaration by the actual inventor or inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43 or § 1.47;
- (4) The processing fee set forth in § 1.17(i); and
- (5) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).
(b) Nonprovisional application—fewer inventors due to amendment or cancellation of claims. If the correct inventors are named in a nonprovisional application, and the prosecution of the nonprovisional application results in the amendment or cancellation of claims so that fewer than all of the currently named inventors are the actual inventors of the invention being claimed in the nonprovisional application, an amendment must be filed requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed. Amendment of the inventorship requires:
- (1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the named inventor or inventors being deleted and acknowledges that the inventor’s invention is no longer being claimed in the nonprovisional application; and
- (2) The processing fee set forth in § 1.17(i).
(c) Nonprovisional application—inventors added for claims to previously unclaimed subject matter. If a nonprovisional application discloses unclaimed subject matter by an inventor or inventors not named in the application, the application may be amended to add claims to the subject matter and name the correct inventors for the application. Amendment of the inventorship requires:
- (1) A request to correct the inventorship that sets forth the desired inventorship change;
- (2) A statement from each person being added as an inventor that the addition is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intention on his or her part;
- (3) An oath or declaration by the actual inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43, or § 1.47;
- (4) The processing fee set forth in § 1.17(i); and
- (5) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).
(d) Provisional application—adding omitted inventors. If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive intention on the part of the omitted inventor or inventors, the provisional application may be amended to add the name or names of the omitted inventor or inventors. Amendment of the inventorship requires:
- (1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the inventor or inventors being added and states that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and
- (2) The processing fee set forth in § 1.17(q).

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) as discussed below. 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. See MPEP § 602.01(c).

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.

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.

Requests under pre-AIA 37 CFR 1.48 are generally decided by the primary examiner except:

(A) When the application is involved in an interference (decided by the Patent Trial and Appeal Board);
(B) When the application is a national stage application filed under 35 U.S.C. 371 which, as of the date of filing of the request, has not been accepted as satisfying the requirements for entry into the national stage (decided in the International Patent Legal Administration); and
(C) When accompanied by a petition under 37 CFR 1.183 requesting waiver of a requirement under pre-AIA 37 CFR 1.48(a) or (c), e.g., waiver of the statement of lack of deceptive intent by an inventor to be added or deleted, or waiver of the reexecution of the declaration by all of the inventors (decided in the Office of Petitions).

When any request for correction of inventorship under pre-AIA 37 CFR 1.48(a)-(c) is granted, the examiner will acknowledge any addition or deletion of the names of inventors by using either form paragraph 2.14 or form paragraph 2.14.01 in the next Office communication to applicant. The application will be forwarded to OPAP for issuance of a corrected filing receipt and correction of Office records.

¶ 2.14 Correction of Inventorship Under 37 CFR 1.48(a) or (c) Filed Before Sept. 16, 2012, Sufficient

In view of the request to correct inventorship under 37 CFR 1.48 and the accompanying papers filed before September 16, 2012, it has been found that this nonprovisional application, as filed, through error and without deceptive intent, improperly set forth the inventorship, and accordingly, this application has been corrected in compliance with 37 CFR 1.48 ([1]). The inventorship of this application has been changed by [2].

The application will be forwarded to the Office of Patent Application Processing (OPAP) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as corrected.

Examiner Note:

1. In bracket 1, insert --a-- or --c--, as appropriate.

2. In bracket 2, insert explanation of correction made, including addition or deletion of appropriate names.

3. This form paragraph should only be used if the request to correct inventorship was filed before September 16, 2012. Requests under 37 CFR 1.48 filed on or after September 16, 2012, are handled by the Office of Patent Application Processing.

¶ 2.14.01 Correction of Inventorship Under 37 CFR 1.48(b) Filed Before Sept. 16, 2012, Sufficient

In view of the request to correct inventorship under 37 CFR 1.48(b) and accompanying papers filed before September 16, 2012, the inventorship of this nonprovisional application has been changed by the deletion of [1].

Examiner Note:

1. This form paragraph is to be used only for 37 CFR 1.48(b) corrections.

2. In bracket 1, insert the names of the deleted inventor(s).

The grant or denial of a request under pre-AIA 37 CFR 1.48(a) may result in the lack of inventorship overlap between a parent application and a continuing application and the consequent inability to claim benefit in the continuing application of the parent application’s filing date under 35 U.S.C. 120. Intervening references must then be considered.

For correction of inventorship in a patent, see 37 CFR 1.324 and MPEP § 1481.

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. See 37 CFR 1.48(f).

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.

Example

A nonprovisional application is filed (either prior to, on or after December 1, 1997 but prior to September 16, 2012) naming A as the sole inventor without an executed oath or declaration under pre-AIA 37 CFR 1.63. Only claim 1 is presented.

A "Notice to File Missing Parts of Application" is mailed to the applicant requiring an oath or declaration under pre-AIA 37 CFR 1.63. In timely reply thereto after December 1, 1997 but prior to September 16, 2012, a preliminary amendment adding claim 2, and a declaration under pre-AIA 37 CFR 1.63 executed by inventors A and B are submitted with B being added in view of claim 2. A request under pre-AIA 37 CFR 1.48(c) is not required, in that pre-AIA 37 CFR 1.48(f)(1) will act to set forth an inventorship of A and B.

Similarly, where a preliminary amendment canceling or amending claims concomitantly requires the deletion of an inventor, such deletion may be accomplished by the submission of a first-filed executed oath or declaration on or after December 1, 1997 naming the actual inventive entity. A request under pre-AIA 37 CFR 1.48(b) would not be necessary.

III. Pre-AIA 37 CFR 1.48(a)

37 C.F.R. (pre-AIA) 1.48 Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.

(a) Nonprovisional application after oath/declaration filed. If the inventive entity is set forth in error in an executed § 1.63 oath or declaration in a nonprovisional application, and such error arose without any deceptive intention on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, the inventorship of the nonprovisional application may be amended to name only the actual inventor or inventors. Amendment of the inventorship requires:
- (1) A request to correct the inventorship that sets forth the desired inventorship change;
- (2) A statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part;
- (3) An oath or declaration by the actual inventor or inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43 or § 1.47;
- (4) The processing fee set forth in § 1.17(i); and
- (5) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).

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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: (1) a request to correct the inventorship that sets forth the desired inventorship change; (2) 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; (3) an oath or declaration by each actual inventor or inventors as required by pre-AIA 37 CFR 1.63 or as permitted by pre-AIA 37 CFR 1.42, 1.43 or 1.47; (4) the fee set forth in 37 CFR 1.17(i); and (5) 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. (Note that 35 U.S.C. 120 and 37 CFR 1.78 require an overlap of inventorship, hence, refiling, rather than requesting under pre-AIA 37 CFR 1.48 to change inventorship where the change would not result in an inventorship overlap may result in the loss of a benefit claim.)

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 (original oaths or declarations under pre-AIA 37 CFR 1.63 and written consent of assignees along with separate processing fees must be filed in each application).

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 (see MPEP § 410).

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. For example, where the inventive entity is A and B, a declaration may not be executed only by A naming only A as the inventor and a different declaration may not be executed only by B naming only B as the inventor, which two declarations are then combined into one declaration with a first page of boiler plate, a second page with A’s signature, and a second page with B’s signature (so that it appears that the declaration was executed with the entire inventive entity appearing in the declaration when it did not).

Conflicting oaths or declarations filed: If the first executed oaths or declarations that are submitted name different inventive entities (e.g., one declaration names A, B, and C as inventors and a second declaration names D as the inventor) and are filed on the same day, the application will be considered to name the inventors named in both declarations (A, B, C, and D) and a new oath or declaration in compliance with pre-AIA 37 CFR 1.63 including the entire inventive entity will be required. Where an application is filed with an executed declaration under pre-AIA 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. See pre-AIA 37 CFR 1.41(a)(1).

Pre-AIA 37 CFR 1.47 is available in applications filed prior to September 16, 2012, to meet the requirement for an oath or declaration under pre-AIA 37 CFR 1.63 as for example where A, B, and C were originally named as inventors and D who refuses to cooperate is to be later added as an inventor. The oath or declaration under pre-AIA 37 CFR 1.63 of inventor D may be supplied pursuant to pre-AIA 37 CFR 1.47(a), but note that the required pre-AIA 37 CFR 1.48(a)(2) statement must still be supplied by inventor D (an unlikely event in view of the inability to obtain the executed oath or declaration under pre-AIA 37 CFR 1.63 ), or waiver thereof petitioned under 37 CFR 1.183. Alternatively, where D is to be added as an inventor (where inventors A, B, and C have previously executed the application under pre-AIA 37 CFR 1.63 ) and it is original inventor A who refuses to cooperate, the statement under pre-AIA 37 CFR 1.48(a)(2) is only required to be signed by inventor D. Originally named inventor A is merely required to reexecute an oath or declaration in compliance with pre-AIA 37 CFR 1.63. Petitions under pre-AIA 37 CFR 1.47 are only applicable to an original oath or declaration and are not applicable to the reexecution of another oath or declaration by A. In such circumstances, a petition under pre-AIA 37 CFR 1.183 should be considered requesting waiver of the requirement of pre-AIA 37 CFR 1.64 that each of the actual inventors, i.e., inventor A, execute the oath or declaration, particularly where assignee consent is given to the requested correction. Absent assignee consent, the petition under 37 CFR 1.183 requesting waiver of the reexecution of the oath or declaration will be evaluated as to whether the nonsigning inventor was actually given the opportunity to reexecute the oath or declaration, or whether the nonsigning inventor could not be reached.

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 (37 CFR 1.53(f) ) of an application filed under 37 CFR 1.53(b) must clearly identify the previously filed specification it is intended to execute. See MPEP § 601.01(a) and § 602.

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 under pre-AIA 37 CFR 1.48(a) and a petition fee under 37 CFR 1.183 are required. Similarly, where in addition to a request under pre-AIA 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 two 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. See pre-AIA 37 CFR 1.48(a)(5). 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. The Office employee deciding the request should check the file record for any indication of the existence of an assignee (e.g., a small entity assertion from an assignee).

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. Such presumption should be set forth in the decision to alert requesters to the requirement.

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. Further, the assignee must establish its ownership of the application in accordance with pre-AIA 37 CFR 3.73. MPEP § 324.

E. Continuing Applications

Example

The parent application names inventors A and B and claims inventions 1 and 2. Inventor A contributes only to invention 1 and inventor B contributes only to invention 2. A restriction requirement is made and invention 1 was elected. Upon allowance of claims directed to invention 1 and cancellation of claims directed to invention 2, a request under pre-AIA 37 CFR 1.48(b) was filed requesting deletion of inventor B. The request under pre-AIA 37 CFR 1.48(b) was granted by the primary examiner. Prior to the issuance of the parent application, a divisional application claiming benefit under 35 U.S.C. 120 to the parent application, is filed claiming only invention 2 and naming only inventor B. The inventorship overlap required by 35 U.S.C. 120 is met in this instance even though at the time of filing of the divisional application, the inventorship overlap was lost as a result of the deletion of an inventor in the parent application. The overlap of inventorship need not be present on the date the continuing application is filed nor present when the parent application issues or becomes abandoned.

On filing a continuing application under 37 CFR 1.53(b) 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 under 37 CFR 1.53(b), a copy of an oath or declaration from the prior application can only be used where inventors are to be deleted (37 CFR 1.53(b)(1) and pre-AIA 37 CFR 1.63(d)(1)(ii) ), but not where inventors are to be added. Where inventors are to be added, a newly executed oath or declaration must be submitted. See pre-AIA 37 CFR 1.63(d)(5).

In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), 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 period set forth in 37 CFR 1.53(f) 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 under 35 U.S.C. 120, 121, or 365(c) in a subsequent nonprovisional or international application.

Should a continuation or divisional application be filed under 37 CFR 1.53(b) (1) 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 under 37 CFR 1.53(b) 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.

When entering the national stage under 35 U.S.C. 371, correction of inventorship is via the provisions of pre-AIA 37 CFR 1.497(d). See MPEP § 1893.01(e).

¶ 2.13 Correction of Inventorship Under 37 CFR 1.48(a), Insufficient

The request to correct the inventorship of this nonprovisional application under 37 CFR 1.48(a) is deficient because:

Examiner Note:

1. This form paragraph should only be used in response to requests to correct an error in the naming of the prior inventors in nonprovisional applications. If the request is merely to delete an inventor because claims were canceled or amended such that the deleted inventor is no longer an actual inventor of any claim in the application, use form paragraph 2.13.01 instead of this form paragraph.

Potential rejections

A rejection under pre-AIA 35 U.S.C. 102(f) or (g) must be considered if the request is denied.

The grant or denial of the request may result in the loss of inventorship overlap between a parent application and a continuing application and an inability to claim benefit in the continuing application of the parent application’s filing date under 35 U.S.C. 120. Intervening references must then be considered.

2. A primary examiner may not decide the request if the request is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.48(a) (typically a refusal of one of the inventors to be added or deleted to execute the required statement of facts) – the request for correction of inventorship and request for waiver of the rules should be forwarded to the Office of Petitions.

3. One or more of form paragraphs 2.13a - 2.13e should follow this form paragraph, as applicable.

4. Where it appears that: 1) the inventor(s) to be added or deleted may be hostile and will not execute a required statement of facts; and 2) the actual inventorship would overlap the original inventorship (37 CFR 1.78 ), follow this form paragraph with form paragraph 2.13f.

5. Requests under 37 CFR 1.41 to change inventorship where an executed oath or declaration has not been filed are to be acted upon by OPAP.

6. Where there is a correction in a person’s name, e.g., due to misspelling, or marriage, a request under 37 CFR 1.48 is inappropriate. SeeMPEP § 602.08(b) for name changes.

7. An initial executed oath or declaration under 37 CFR 1.63 may change the inventorship as originally set forth when the application is filed without an executed oath or declaration without request for correction of inventorship (37 CFR 1.48(f) ).

8. This form paragraph should only be used if the request to correct inventorship was filed before September 16, 2012. Requests under 37 CFR 1.48 filed on or after September 16, 2012, are handled by the Office of Patent Application Processing.

¶ 2.13a Statement of Facts Problem (for Use Following FP 2.13, If Applicable)

The statement of facts by an inventor or inventors to be added or deleted does not explicitly state that the inventorship error occurred without deceptive intent on his or her part or cannot be construed to so state.

¶ 2.13b No New Oath or Declaration (for Use Following FP 2.13 or 2.13.02, If Applicable)

An oath or declaration by each actual inventor or inventors listing the entire inventive entity has not been submitted.

¶ 2.13c Required Fee Not Submitted (for Use Following FP 2.13, 2.13.01 or 2.13.02, If Applicable)

It lacks the required fee under 37 CFR 1.17(i).

¶ 2.13d Written Consent Missing (for Use Following FP 2.13 or 2.13.02, If Applicable)

It lacks the written consent of any assignee of one of the originally named inventors.

¶ 2.13e 37 CFR 3.73(b) Submission (for Use Following FP 2.13 or 2.13.02, If Applicable)

A 37 CFR 3.73(b) submission has not been received to support action by the assignee.

¶ 2.13f Hostile Inventor(s)/Inventorship Overlap (for Use Following FP 2.13, If Applicable)

As it appears that a party required by 37 CFR 1.48(a)(2) to submit a statement of facts may not be willing to submit such statement, applicant should consider either: a) submission of a petition under 37 CFR 1.183 to waive that requirement if the original named inventor(s) has assigned the entire right and interest to an assignee who has given its consent to the requested inventorship correction, MPEP § 602.01(c)(3), subsection III.A., or b) refiling the application (where addition is needed) under 37 CFR 1.53(b) with a new oath or declaration and any necessary petition under 37 CFR 1.47, or where only deletion is needed, either under 37 CFR 1.53(b) utilizing a copy of a prior oath or declaration under 37 CFR 1.63(d)(1)(iv), or under 37 CFR 1.53(d) ) (design applications only), thereby eliminating the need for a 37 CFR 1.48 request.

¶ 2.13.01 Correction of Inventorship Under 37 CFR 1.48(b), Insufficient

The request for the deletion of an inventor in this nonprovisional application under 37 CFR 1.48(b) is deficient because:

Examiner Note:

1. This form paragraph should only be used when the inventorship was previously correct when originally executed but an inventor is being deleted because claims have been amended or canceled such that he or she is no longer an inventor of any remaining claim in the non-provisional application. If the inventorship is being corrected because of an error in naming the correct inventors, use form paragraph 2.13 instead of this form paragraph.

2. Follow this form paragraph with one or both of form paragraphs 2.13c and 2.13g.

3. See note 1 of form paragraph 2.13, Potential rejections.

¶ 2.13g Statement Under 37 CFR 1.48(b)(2) Problem (for Use Following FP 2.13.01, If Applicable)

The request was not accompanied by the statement required under 37 CFR 1.48(b)(2).

¶ 2.13.02 Correction of Inventorship Under 37 CFR 1.48(c), Insufficient

The request to correct the inventorship in this nonprovisional application under 37 CFR 1.48(c) requesting addition of an inventor(s) is deficient because:

Examiner Note:

1. This form paragraph should only be used when the inventorship was previously correct when the application was originally executed, but the inventorship now needs to be changed due to subsequent addition of subject matter from the specification to the claims, which subject matter was contributed by a party not originally named as an inventor.

2. See note 2 of form paragraph 2.13.

3. Follow this form paragraph with any of form paragraphs 2.13b-2.13e or 2.13h.

4. See note 1 of form paragraph 2.13, Potential rejections.

5. See notes 4-7 of form paragraph 2.13.

¶ 2.13h Statement of Facts, Added Inventor (for Use Following FP 2.13.02, If Applicable)

The statement of facts by the inventor(s) to be added does not explicitly state that the amendment of the inventorship is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intent on the part of the inventor(s) to be added, or cannot be construed to so state.

¶ 2.14.01 Correction of Inventorship Under 37 CFR 1.48(b) Filed Before Sept. 16, 2012, Sufficient

Examiner Note:

1. This form paragraph is to be used only for 37 CFR 1.48(b) corrections.

2. In bracket 1, insert the names of the deleted inventor(s).

IV. Pre-AIA 37 CFR 1.48(b)

37 C.F.R. 1.48 (pre-AIA) Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.

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(b) Nonprovisional application—fewer inventors due to amendment or cancellation of claims. If the correct inventors are named in a nonprovisional application, and the prosecution of the nonprovisional application results in the amendment or cancellation of claims so that fewer than all of the currently named inventors are the actual inventors of the invention being claimed in the nonprovisional application, an amendment must be filed requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed. Amendment of the inventorship requires:
- (1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the named inventor or inventors being deleted and acknowledges that the inventor's invention is no longer being claimed in the nonprovisional application; and
- (2) The processing fee set forth in § 1.17(i).

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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: (1) 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 (2) a fee under 37 CFR 1.17(i). 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 pre-AIA 37 CFR 1.48(b).

V. Pre-AIA 37 CFR 1.48(c)

37 C.F.R. 1.48 (pre-AIA) Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.

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(c) Nonprovisional application—inventors added for claims to previously unclaimed subject matter. If a nonprovisional application discloses unclaimed subject matter by an inventor or inventors not named in the application, the application may be amended to add claims to the subject matter and name the correct inventors for the application. Amendment of the inventorship requires:
- (1) A request to correct the inventorship that sets forth the desired inventorship change;
- (2) A statement from each person being added as an inventor that the addition is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intention on his or her part;
- (3) An oath or declaration by the actual inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43, or § 1.47;
- (4) The processing fee set forth in § 1.17(i); and
- (5) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).

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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: (1) a request to correct the inventorship that sets forth the desired inventorship change; (2) 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; (3) an oath or declaration by each actual inventor; (4) the fee under 37 CFR 1.17(i); and (5) the written consent of any assignee of the original named inventors.

VI. Pre-AIA 37 CFR 1.48(d)

37 C.F.R. 1.48 (pre-AIA) Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.

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(d) Provisional application—adding omitted inventors. If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive intention on the part of the omitted inventor or inventors, the provisional application may be amended to add the name or names of the omitted inventor or inventors. Amendment of the inventorship requires:
- (1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the inventor or inventors being added and states that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and
- (2) The processing fee set forth in § 1.17(q).

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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: (1) a request to correct the inventorship that sets forth the desired inventorship change; (2) a statement that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and (3) the fee set forth in 37 CFR 1.17(q). 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.

See also discussion below regarding requests filed under 37 CFR 1.48(e).

VII. Pre-AIA 37 CFR 1.48(e)

37 C.F.R. 1.48 (pre-AIA) Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.

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(e) Provisional application—deleting the name or names of the inventor or inventors. If a person or persons were named as an inventor or inventors in a provisional application through error without any deceptive intention on the part of such person or persons, an amendment may be filed in the provisional application deleting the name or names of the person or persons who were erroneously named. Amendment of the inventorship requires:
- (1) A request to correct the inventorship that sets forth the desired inventorship change;
- (2) A statement by the person or persons whose name or names are being deleted that the inventorship error occurred without deceptive intention on the part of such person or persons;
- (3) The processing fee set forth in § 1.17(q); and
- (4) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).

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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: (1) a request to correct the inventorship that sets forth the desired inventorship change; (2) 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; (3) the fee set forth in 37 CFR 1.17(q); and (4) the written consent of any assignee.

Under 35 U.S.C. 119(e), a later filed nonprovisional application under 35 U.S.C. 111(a) 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 OPAP, 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)

37 C.F.R. 1.48 (pre-AIA) Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.

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(f)
- (1) Nonprovisional application—filing executed oath/declaration corrects inventorship. If the correct inventor or inventors are not named on filing a nonprovisional application under § 1.53(b) without an executed oath or declaration under § 1.63 by any of the inventors, the first submission of an executed oath or declaration under § 1.63 by any of the inventors during the pendency of the application will act to correct the earlier identification of inventorship. See §§ 1.41(a)(4) and 1.497(d) and (f) for submission of an executed oath or declaration to enter the national stage under 35 U.S.C. 371 naming an inventive entity different from the inventive entity set forth in the international stage.
- (2) Provisional application filing cover sheet corrects inventorship. If the correct inventor or inventors are not named on filing a provisional application without a cover sheet under § 1.51(c)(1), the later submission of a cover sheet under § 1.51(c)(1) during the pendency of the application will act to correct the earlier identification of inventorship.

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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 under pre-AIA 37 CFR 1.63 has not been submitted by any of the inventors. In this situation, the submission of an executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors is sufficient to correct an earlier identification of inventorship. A first-filed oath or declaration under pre-AIA 37 CFR 1.63 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 filed under 35 U.S.C. 371 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 pre-AIA 37 CFR 1.497(d) must be satisfied. See MPEP § 1893.01(e).