What happens if a new inventor is identified in a CPA without filing a proper request?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-09

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.

If a new inventor is identified in a Continued Prosecution Application (CPA) without filing a proper request, it can lead to inventorship issues. The MPEP ¶ 2.33 states:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

This means that simply naming a new inventor in the CPA filing documents is not sufficient. Without a proper request under 37 CFR 1.48, the inventorship will remain the same as in the prior application, potentially leading to complications in the patent prosecution process.

For more information on CPA, visit: CPA.

Topics: MPEP 200 - Types and Status of Application; Benefit and Priority MPEP 201 - Types of Applications Patent Law Patent Procedure
Tags: Composition Category, Disclosure Individuals, Disclosure Timing, Plant Distinct Variety, Plant Subject Matter