Can inventorship be corrected during inter partes reexamination?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Yes, inventorship can be corrected during inter partes reexamination. The MPEP provides guidance on this matter: “Correction of inventorship may also be made during reexamination. See 37 CFR 1.324 and MPEP § 1481 for petition for correction of inventorship in a patent.” However, the process for correction is slightly different in reexamination: “If a petition filed under 37 CFR 1.324 is granted, a Certificate of Correction indicating the change of inventorship will not be issued, because the reexamination certificate that will ultimately issue will contain the appropriate change-of-inventorship information (i.e., the Certificate of Correction is in effect merged with the reexamination certificate).” Patent owners should follow the procedures outlined in MPEP § 1481 and 37 CFR 1.324 to correct inventorship during reexamination. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Requirements for Certificate of Correction of Applicant’s Mistake MPEP 1481 Required Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2658 Patentee Can Request Certificate of Correction MPEP 1481 Permitted Criteria for Certificate of Correction Under 35 U.S.C. 255 MPEP 1481 Certificate of Correction Mistakes Must Be Minor MPEP 1481 Required Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2658 Fee for Correcting Inventorship in a Patent MPEP 1481 Mistake Affecting Claim Scope Must Be Corrected by Reissue MPEP 1481 Required Mistakes Correctable via Reissue Application MPEP 1481 Permitted Material Changes Not Eligible for Certificate of Correction MPEP 1481 Required Other Related FAQs 5 FAQs Collapse Can affidavits be used in inter partes reexaminat...