602.01(c)(1)   Correction of Inventorship in an Application – Request Filed On or After September 16, 2012 [R-11.2013]

[Editor Note: See MPEP § 602.01(c)(3) for information about correction of inventorship for applications 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.

  • (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 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).

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

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, 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).

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) 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). 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.