602.01(c) Correction of Inventorship, Name of Inventor, and Order of Names in an Application [R-10.2019]
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. See MPEP § 602.01 for information specific to naming inventorship. Correction of inventorship may be requested under 37 CFR 1.48 or may be obtained by filing a continuing application under 37 CFR 1.53.
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.
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) in Revision 08.2017 of the Ninth Edition of the MPEP, published in January 2018.
For additional information pertaining to correction of inventorship in applications that name joint inventors, see MPEP § 602.09.
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-10.2019]
[Editor Note: See MPEP § 602.01(c)(3) in Revision 08.2017 of the Ninth Edition of the MPEP, published in January 2018 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.
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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.
V. FORM TO REQUEST CORRECTION OR CHANGE TO INVENTORSHIP
The Office has a form PTO/AIA/40 to request correction in a patent application (other than a reissue application) relating to inventorship, an inventor name, or order of names. The form is reproduced below and is also available on www.uspto.gov.
602.01(c)(2) Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012 [R-10.2019]
[Editor Note: See MPEP § 602.01(c)(3) in Revision 08.2017 of the Ninth Edition of the MPEP, published in January 2018 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.
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- (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).
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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.
See MPEP § 602.01(c)(1) for a copy of form PTO/AIA/40 that may be used to correct or update in inventor’s name or change the order of names in applications (other than reissue applications).