- (1) They did not physically work together or at the same time;
- (2) Each inventor did not make the same type or amount of contribution; or
- (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
37 CFR 1.46 Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012. See 37 CFR 1.46 (pre-AIA) for the rule otherwise in effect.]
- (a) A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
- (b) If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. If an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under paragraph (a) of this section, the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).
- (1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
- (2) If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including:
- (i) The fee set forth in § 1.17(g);
- (ii) A showing that such person has sufficient proprietary interest in the matter; and
- (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
- (1) Correction or update in the name of the applicant. Any request to correct or update the name of the applicant under this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7)). in accordance with § 1.76(c)(2). A change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application.
- (2) Change in the applicant. Any request to change the applicant under this section after an original applicant has been specified must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7) in accordance with § 1.76(c)(2)) and comply with §§ 3.71 and 3.73 of this title.
37 CFR 1.42 defines who is the applicant for a patent. The word “applicant” when used in title 37 refers to the inventor or all joint inventors, or to the person applying for a patent as provided in 37 CFR 1.43, 1.45, or 1.46. If a person is applying for a patent as provided in 37 CFR 1.46, the word “applicant” refers to the assignee, the person to whom the inventor is under an obligation to assign, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for the patent under 37 CFR 1.46 and not the inventor. If fewer than all joint inventors are applying for the patent as provided in 37 CFR 1.45, the phrase “the applicant” means the joint inventors who are applying for the patent without the omitted inventor(s).
37 CFR 1.43 provides that if an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. See also MPEP § 409.01(a).
37 CFR 1.45 pertains to an application filed by joint inventors. Joint inventors must apply for a patent jointly and each joint inventor must make the inventor’s oath or declaration required by 37 CFR 1.63, except as provided for in 37 CFR 1.64. See 35 U.S.C. 116(a) and 37 CFR 1.45(a). If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See 35 U.S.C. 116(b) and 37 CFR 1.45(a). See also MPEP § 409.02.
37 CFR 1.46 provides for the filing of an application for patent by an assignee, a person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter under 35 U.S.C. 118. If an application under 35 U.S.C. 111 is made by a person other than the inventor under 37 CFR 1.46(a), the application must contain an application data sheet under 37 CFR 1.76 specifying in the applicant information section the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter. While identifying the party making the application for patent (the applicant) in an application data sheet is not a filing date requirement, a delay in naming the applicant under 37 CFR 1.46 may cause it to appear that applicant is the inventor and thus requiring the party to file a request under 37 CFR 1.46(c) to become the applicant, which requires compliance with 37 CFR 3.71 and 3.73. See MPEP § 325. If an assignee is filing an application under 37 CFR 1.46, but the assignee is not the assignee of the entire right, title and interest in the application, then the assignee would need to be named as the applicant under 37 CFR 1.46 together with the other party who has an ownership interest. For example, if there are two joint inventors, and one inventor has assigned his rights in the invention to the assignee, but the other inventor has not assigned his rights in the invention and is under no obligation to assign his rights, the assignee and the other inventor should be identified as the applicant in the applicant information section of the application data sheet. See 37 CFR 3.71. Under the example provided, the assignee would have an undivided interest in the entirety of the one inventor’s interest but would not be the owner of the entire right, title and interest in the invention. Because of this, the assignee cannot be named as the sole applicant in the application. All parties having any portion of the ownership in the patent must act together as a composite entity in patent matters before the Office. See MPEP § 301.
If the applicant is the assignee or person to whom the inventor is under an obligation to assign the invention, the documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) should be recorded as provided for in 37 CFR part 3 no later than the date the issue fee is paid. See 37 CFR 1.46(b)(1).
If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (1) the fee set forth in 37 CFR 1.17(g); (2) a showing that such person has sufficient proprietary interest in the matter; and (3) a statement that making the application for patent by a person who otherwise shows sufficient proprietary interest on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties. See 37 CFR 1.46(b)(2). A discussion of the evidence necessary for a showing that a person has sufficient proprietary interest in the matter is set forth in MPEP § 409.05. The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette. See 37 CFR 1.46(f).
Any request to correct or update the name of the applicant after an applicant has been specified under 37 CFR 1.46(b) must include an application data sheet under 37 CFR 1.76 specifying the correct or updated name of the applicant in in the applicant information section. See 37 CFR 1.46(c)(1). Thus, if there is no change in the applicant itself but just the applicant’s name (due to a correction or name change), the applicant need only submit an application data sheet specifying the correct or updated name of the applicant in the applicant information section. Any corrected application data sheet must identify the information being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2). A change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application.
II. CHANGE OF APPLICANT
Where no applicant is identified, the Office will, by default, consider the inventor to be the applicant (e.g., to complete processing of the application so that it can be forwarded for examination). Any request to change the applicant must include an application data sheet under 37 CFR 1.76 specifying the applicant in the applicant information section in accordance with 37 CFR 1.76(c)(2) and must comply with 37 CFR 3.71 and 3.73. See 37 CFR 1.46(c)(2). Thus, if there is a change of applicant under 37 CFR 1.46 (e.g., from the inventor to the assignee, or from one assignee to another assignee), the new applicant must establish its ownership of the application under 37 CFR 3.71(b) and 3.73.
37 CFR 1.46(e) provides that if a patent is granted on an application filed under 37 CFR 1.46 by a person other than the inventor, the patent shall be granted to the real party in interest (e.g., the current assignee for an application that has been assigned). Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in 37 CFR 3.81.
Where a real party in interest has filed an application under 37 CFR 1.46, the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest. See 35 U.S.C. 118 and 37 CFR 1.46(e). The use of box 3 of the Part B – Fee(s) Transmittal form, PTOL-85B will be required where the real party in interest has changed from filing of the application and the application was filed pursuant to 37 CFR 1.46. Identification of the real party in interest in box 3 of PTOL-85B will not change the applicant of record in the application. For example, where the application was filed pursuant to 37 CFR 1.46 and identified Assignee X as the applicant, but the ownership subsequently changed and box 3 of PTOL-85B identified Assignee Y as the real party in interest, the issued patent would identify Assignee X as the applicant and Assignee Y as the assignee. Assignee Y would only be identified as the applicant if a proper request to change the applicant is filed pursuant to 37 CFR 1.46 no later than payment of the issue fee. Furthermore, a request to change the applicant under 37 CFR 1.46(c)(2) should not be filed after the patent has issued because such a request cannot be granted.
III. CORRECTION OR UPDATE OF 37 CFR 1.46 APPLICANT
For correction of an inventor’s name, see 37 CFR 1.48 and MPEP § 602.01(c)(2).
If a minor typographical error in a 37 CFR 1.46 applicant’s name is detected prior to payment of the issue fee, a request to correct the applicant’s name under 37 CFR 1.46(c)(1) should be filed promptly and must be filed no later than payment of the issue fee. The request, which can essentially be a signed transmittal letter, must be filed with an application data sheet under 37 CFR 1.76 specifying the correct name of the applicant in the applicant information section (37 CFR 1.76(b)(7)) and must be shown with appropriate markings (underlining for additions, strikethrough for deletions). The request should be clear that the request is being filed under 37 CFR 1.46(c)(1) rather than 37 CFR 1.46(c)(2). Neither a fee nor a statement under 37 CFR 3.73(c) is required.
If the minor typographical error in the applicant’s name is not detected until after the payment of the issue fee, the application must be withdrawn from issue or a certificate of correction must be filed, as further described below, because amendments are not permitted after the payment of the issue fee. If the application is withdrawn from issue under 37 CFR 1.313(c)(2), the request under 37 CFR 1.46(c)(1) to correct the applicant’s name must be submitted with a request for continued examination (RCE) under 37 CFR 1.114 if the application is a utility or plant application. In the case of a design application, the petition to withdraw from issue under 37 CFR 1.313(c)(3) and request under 37 CFR 1.46(c)(1) should be accompanied by a continued prosecution application (CPA) under 37 CFR 1.53(d). If a certificate of correction is filed, a petition under 37 CFR 1.182 must be filed with the certificate of correction after the patent issues requesting correction of the applicant’s name.
If a 37 CFR 1.46 applicant’s name changes (e.g., XYZ, LLC changes its name to XYZ, Inc.), a request to update the name of the applicant under 37 CFR 1.46(c)(1) should be filed promptly and must be filed no later than payment of the issue fee. The request, which can essentially be a signed transmittal letter, must be filed with an application data sheet under 37 CFR 1.76 specifying the correct name of the applicant in the applicant information section (37 CFR 1.76(b)(7)) and must be shown with appropriate markings (underlining for additions, strikethrough for deletions). The request should be clear that the request is being filed under 37 CFR 1.46(c)(1) rather than 37 CFR 1.46(c)(2). Neither a fee nor a statement under 37 CFR 3.73(c) is required, however, applicant may submit a statement under 37 CFR 3.73(c) that includes a reference to the name change document, if desired.
37 CFR 1.46(c)(1) does not provide for deletion of a party who was incorrectly named as the applicant (e.g., Company X was identified in the applicant information section of the application data sheet, but the named inventors neither assigned nor were under an obligation to assign to Company X, and Company X is not a sufficient proprietary interest party). In such a situation, a petition under 37 CFR 1.182, including the petition fee under 37 CFR 1.17(f), may be filed and accompanied by an application data sheet under 37 CFR 1.76 specifying the correct name of the applicant in the applicant information section (37 CFR 1.76(b)(7)) in accordance with 37 CFR 1.76(c)(2). The petition should provide an adequate explanation regarding the identification of a party as the applicant who was not the actual applicant.
605.02 Applicant for Application Filed Before September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 605.01 for information regarding the applicant in applications filed on or after September 16, 2012.]
37 CFR 1.41 (pre-AIA) Applicant for patent.
- (a) A patent is applied for in the name or names of the actual inventor or inventors.
- (1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63, except as provided for in §§ 1.53(d)(4) and 1.63(d). If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b), unless applicant files a paper, including the processing fee set forth in § 1.17(i), supplying or changing the name or names of the inventor or inventors.
- (2) The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1). If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is that inventorship 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 or changing the name or names of the inventor or inventors.
- (3) In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63 or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name, residence, and citizenship 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.
- (4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis. See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv) (§ 1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371).
37 CFR 1.45 (pre-AIA) Joint inventors.
- (a) Joint inventors must apply for a patent jointly and each must make the required oath or declaration; neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47.
- (b) Inventors may apply for a patent jointly even though
- (1) They did not physically work together or at the same time,
- (2) Each inventor did not make the same type or amount of contribution, or
- (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
Pre-AIA 37 CFR 1.41(a) 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). The oath or declaration may be filed on the filing date of the application or on a later date. If an oath or declaration is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to 37 CFR 1.53(b), unless an applicant files a paper under pre-AIA 37 CFR 1.41(a)(1) accompanied by the processing fee set forth in 37 CFR 1.17(i) supplying or changing the name or names of the inventor or inventors.
For correction of inventorship, see MPEP § 602.01(c)et seq.
For applications filed before September 16, 2012, if the application is filed by another, see MPEP § 409.03et seq.
For assignments of application by inventor, see MPEP § 301.
For applications filed before September 16, 2012 by another on behalf of a deceased or legally incapacitated inventor, see MPEP § 409.01(b). For applications filed before September 16, 2012 where at least one inventor is unavailable, see MPEP § 409.03et seq.
