Oops, You’ve Got The Wrong Guy…
Errors Can and Do Happen –
While the preparation and prosecution of patent applications is about striving for perfection, sometimes errors happen. Determining who should be named as an inventor in a patent application is not always a simple task. There are laws and rules that help define inventorship1, but errors still occur. In addition, if the claims in a patent application change during prosecution, inventorship should always be considered in light of the newly amended claims to determine if correction should be made. The rules to correct inventorship have changed since the enactment of the America Invents Act. While there are dozens of situations that could require correction, such as misspelled inventor names, deceased inventors, non-cooperative inventors, and so forth, this article will describe in general the steps needed to correct inventorship in both pending patent applications and issued patents. The steps are different with each, and different sections of the laws and rules apply.
Correction of Inventorship in Pending Patent Applications
So the inventors on your pending patent application are incorrect. Perhaps the quiet researcher that spends his days in the back corner of the lab was inadvertently forgotten about when it came time to file that patent application. Or maybe an Office Action during prosecution required certain claims to be amended or cancelled, eliminating one or more of the named inventors in your patent application. Or maybe management realized that the 20 named inventors on that patent application didn’t actually all invent what is disclosed in the patent application. Regardless of the reason, if there is an error in a pending patent application, it must be corrected. This is an obligation on the part of all involved, and must be taken seriously.
As part of filing any Utility Patent Application, an Application Data Sheet is prepared that contains a listing of the inventors. In addition, an oath or declaration is signed by each inventor that attests to the fact that they are in fact an inventor of the claimed subject matter contained in the patent application. To correct inventorship in a pending patent application or to change the order of inventor names, the laws and rules2 permit the correction to be made by amendment. The amendment to correct inventorship for a non-provisional application must include a signed request that sets forth the desired inventorship change including an amended Application Data Sheet, 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 intent on his or her part, an oath or declaration from the actual inventor(s), a processing fee, and written consent of the assignee, if any. If prosecution results in amendment or cancellation of claims that eliminates inventor(s), a processing fee is required along with a signed request to correct inventorship and an amended Application Data Sheet. If an amendment of the claims results in previously unnamed inventors, a signed request to correct inventorship with an amended Application Data Sheet is required along with a statement from each added inventor that the addition is necessitated by amendment of the claims and that the error occurred without deceptive intent on his or her part, an oath or declaration by the actual inventors, a processing fee, and written consent of the assignee, if any.
To correct inventorship in a provisional patent application, a signed request to correct inventorship is required along with a processing fee.
Correction by Way of a Continuing Application
Another way to correct inventorship that eliminates the above described steps is to simply file a continuing application with an appropriate set of claims that correspond with the newly named inventors in the continuing application. There must be at least one inventor in common between the parent case and the continuing application, and the parent case must be pending when the continuing application is filed.
Correction of Inventorship in Issued Patents
While a request is appropriate to correct inventorship in a pending patent application, a petition3 is the appropriate vehicle used to correct inventorship in a patent. Correcting inventorship in an issued patent requires petition of all parties including the originally named inventor(s) and assignee(s). Once the petitions of all parties are received with proof of the facts, the Director of the USPTO, will issue a certificate correcting such error. In some circumstances, a court before which inventorship is called in question may order a correction of inventorship, which is then issued by the Director of the USPTO. A correction of inventorship with an issued patent receives a Certificate of Correction to accompany the issued patent.
Before the America Invents Act, the law required that any error to be corrected must have been made “without deceptive intention.” After September 16, 2012, 35 U.S.C. 256 was amended to eliminate the “without deceptive intention” clause.
Currently, to correct inventorship in a patent, the request must be accompanied by a statement from each person who is being added as an inventor and each person who is currently named as an inventor either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change; a specific statement from all assignees of the parties submitting a statement agreeing to the change of inventorship in the patent; and a fee.
Correction by Way of a Reissue
Lastly, if an inventor is not available or refuses to submit a statement agreeing to the change, the assignee of the patent may consider filing a reissue application to correct inventorship since an inventor’s statement is not required for a non-broadening reissue application to correct inventorship.
- See “The Limited Monopoly™” January 2007
- 35 U.S.C. 116 and 37 CFR 1.48.
- 35 U.S.C. 256 and 37 CFR 1.324
Authors Robert D. Gunderman P.E. (Patent Technologies, LLC www.patentechnologies.com) and John M. Hammond P.E. (Patent Innovations, LLC www.patent-innovations.com) are both registered patent agents and licensed professional engineers. They offer several courses that qualify for PDH credits. More information can be found at www.patenteducation.com . Copyright 2015 Robert Gunderman, Jr. and John Hammond.
Note: This short article is intended only to provide cursory background information, and is not intended to be legal advice. No client relationship with the authors is in any way established by this article.
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