MPEP § 605.01 — Applicant for Application filed on or after September 16, 2012 (Annotated Rules)
§605.01 Applicant for Application filed on or after September 16, 2012
This page consolidates and annotates all enforceable requirements under MPEP § 605.01, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Applicant for Application filed on or after September 16, 2012
This section addresses Applicant for Application filed on or after September 16, 2012. Primary authority: 35 U.S.C. 111(a), 35 U.S.C. 118, and 37 CFR 3.73. Contains: 11 requirements, 1 prohibition, 2 guidance statements, 2 permissions, and 5 other statements.
Key Rules
Assignee as Applicant Signature
The owner or assignee of a patent property can take action in a patent application as the applicant. The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom in the absence of an assignment. 37 CFR 3.73. An assignee who is not the original applicant must become the applicant under 37 CFR 1.46 in order to request or take action in a patent application. See MPEP § 325.
[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.]
(c) (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.
[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.]
(c) (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.
[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.]
(c)
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(2) Change in the applicant.
[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.]
(c)
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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.
[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.]
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Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81.
[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.]
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Where a real party in interest has filed an application under § 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.
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.
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.
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.
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.
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 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 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 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.
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.
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.
AIA Effective Dates
[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.
- (c)
- (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.
- (d) Even if the whole or a part interest in the invention or in the patent to be issued is assigned or obligated to be assigned, an oath or declaration must be executed by the actual inventor or each actual joint inventor, except as provided for in § 1.64. See § 1.64 concerning the execution of a substitute statement by an assignee, 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.
- (e) If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81. Where a real party in interest has filed an application under § 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.
- (f) The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette.
[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.]
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(d) Even if the whole or a part interest in the invention or in the patent to be issued is assigned or obligated to be assigned, an oath or declaration must be executed by the actual inventor or each actual joint inventor, except as provided for in § 1.64. See § 1.64 concerning the execution of a substitute statement by an assignee, 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.
[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.]
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(e) If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest.
[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.]
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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.
[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.]
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(f) The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette.
[Editor Note: See MPEP § 605.02 for information regarding the applicant in applications filed before September 16, 2012.]
Issue Fees
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).
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.
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.
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.
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.
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.
Processing Fees
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).
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).
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).
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.
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.
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.
Sufficient Proprietary Interest
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.
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.
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.
Assignee Rights Post-AIA (MPEP 324-325)
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.
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.
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.
Who May File Reissue
The owner or assignee of a patent property can take action in a patent application as the applicant. The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom in the absence of an assignment. 37 CFR 3.73. An assignee who is not the original applicant must become the applicant under 37 CFR 1.46 in order to request or take action in a patent application. See MPEP § 325.
The owner or assignee of a patent property can take action in a patent application as the applicant. The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom in the absence of an assignment. 37 CFR 3.73. An assignee who is not the original applicant must become the applicant under 37 CFR 1.46 in order to request or take action in a patent application. See MPEP § 325.
Establishing Ownership
The owner or assignee of a patent property can take action in a patent application as the applicant. The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom in the absence of an assignment. 37 CFR 3.73. An assignee who is not the original applicant must become the applicant under 37 CFR 1.46 in order to request or take action in a patent application. See MPEP § 325.
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.
Hague Definitions
[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.]
(c) (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.
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.
Mandatory Application Elements
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.
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.
Petition to Withdraw from Issue
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 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.
Correspondence Signature Requirements
(d) Any person having authority may deliver an application and fees to the Office on behalf of the applicant. However, an oath or declaration, or substitute statement in lieu of an oath or declaration, may be executed only in accordance with § 1.63 or 1.64, a correspondence address may be provided only in accordance with § 1.33(a), and amendments and other papers must be signed in accordance with § 1.33(b).
International Design Application Fees
[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.]
(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.
Inventorship for International Designs
[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.]
(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).
(2) If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including:
…
(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.
Applicant Eligibility
(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.
PTAB Contested Case Procedures
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.
Assignment and Ownership (MPEP Chapter 300)
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.
Maintenance Fee Amounts
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.
Grounds for Withdrawal Petition
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.
Reopening Prosecution After Allowance
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.
Certificates of Change of 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.
Citations
| Primary topic | Citation |
|---|---|
| AIA Effective Dates Applicant Eligibility Assignee Rights Post-AIA (MPEP 324-325) Assignee as Applicant Signature International Design Application Fees Inventorship for International Designs Sufficient Proprietary Interest | 35 U.S.C. § 111 |
| AIA Effective Dates Applicant Eligibility Assignee as Applicant Signature Hague Definitions International Design Application Fees Inventorship for International Designs | 35 U.S.C. § 111(a) |
| – | 35 U.S.C. § 116 |
| – | 35 U.S.C. § 116(a) |
| – | 35 U.S.C. § 116(b) |
| Assignee Rights Post-AIA (MPEP 324-325) Assignee as Applicant Signature Issue Fees Maintenance Fee Amounts Sufficient Proprietary Interest | 35 U.S.C. § 118 |
| AIA Effective Dates Applicant Eligibility International Design Application Fees Inventorship for International Designs | 35 U.S.C. § 371 |
| Grounds for Withdrawal Petition Petition to Withdraw from Issue Reopening Prosecution After Allowance | 37 CFR § 1.114 |
| Processing Fees | 37 CFR § 1.17(f) |
| AIA Effective Dates Processing Fees | 37 CFR § 1.17(g) |
| Grounds for Withdrawal Petition Petition to Withdraw from Issue Processing Fees Reopening Prosecution After Allowance | 37 CFR § 1.182 |
| Grounds for Withdrawal Petition Petition to Withdraw from Issue Reopening Prosecution After Allowance | 37 CFR § 1.313(c)(2) |
| Grounds for Withdrawal Petition Petition to Withdraw from Issue Reopening Prosecution After Allowance | 37 CFR § 1.313(c)(3) |
| Correspondence Signature Requirements | 37 CFR § 1.33(a) |
| Correspondence Signature Requirements | 37 CFR § 1.33(b) |
| – | 37 CFR § 1.42 |
| – | 37 CFR § 1.43 |
| – | 37 CFR § 1.45 |
| – | 37 CFR § 1.45(a) |
| AIA Effective Dates Applicant Eligibility Assignee Rights Post-AIA (MPEP 324-325) Assignee as Applicant Signature Assignment and Ownership (MPEP Chapter 300) Certificates of Change of Name Establishing Ownership Hague Definitions International Design Application Fees Inventorship for International Designs Issue Fees Maintenance Fee Amounts PTAB Contested Case Procedures Sufficient Proprietary Interest Who May File Reissue | 37 CFR § 1.46 |
| Assignee Rights Post-AIA (MPEP 324-325) Assignee as Applicant Signature Sufficient Proprietary Interest | 37 CFR § 1.46(a) |
| Hague Definitions Mandatory Application Elements | 37 CFR § 1.46(b) |
| Issue Fees | 37 CFR § 1.46(b)(1) |
| Processing Fees | 37 CFR § 1.46(b)(2) |
| Assignee Rights Post-AIA (MPEP 324-325) Assignee as Applicant Signature Sufficient Proprietary Interest | 37 CFR § 1.46(c) |
| Assignee as Applicant Signature Certificates of Change of Name Establishing Ownership Grounds for Withdrawal Petition Hague Definitions Mandatory Application Elements Petition to Withdraw from Issue Processing Fees Reopening Prosecution After Allowance | 37 CFR § 1.46(c)(1) |
| Assignee Rights Post-AIA (MPEP 324-325) Assignee as Applicant Signature Certificates of Change of Name Establishing Ownership Issue Fees Maintenance Fee Amounts | 37 CFR § 1.46(c)(2) |
| Assignment and Ownership (MPEP Chapter 300) Issue Fees Maintenance Fee Amounts PTAB Contested Case Procedures | 37 CFR § 1.46(e) |
| Processing Fees | 37 CFR § 1.46(f) |
| – | 37 CFR § 1.48 |
| Grounds for Withdrawal Petition Petition to Withdraw from Issue Reopening Prosecution After Allowance | 37 CFR § 1.53(d) |
| Correspondence Signature Requirements | 37 CFR § 1.63 |
| AIA Effective Dates | 37 CFR § 1.64 |
| AIA Effective Dates Applicant Eligibility Assignee Rights Post-AIA (MPEP 324-325) Assignee as Applicant Signature Certificates of Change of Name Establishing Ownership Hague Definitions International Design Application Fees Inventorship for International Designs Mandatory Application Elements Processing Fees Sufficient Proprietary Interest | 37 CFR § 1.76 |
| AIA Effective Dates Applicant Eligibility Assignee as Applicant Signature Certificates of Change of Name Establishing Ownership Hague Definitions International Design Application Fees Inventorship for International Designs Processing Fees | 37 CFR § 1.76(b)(7) |
| AIA Effective Dates Assignee Rights Post-AIA (MPEP 324-325) Assignee as Applicant Signature Hague Definitions Mandatory Application Elements Processing Fees | 37 CFR § 1.76(c)(2) |
| AIA Effective Dates Assignee Rights Post-AIA (MPEP 324-325) Assignee as Applicant Signature Sufficient Proprietary Interest | 37 CFR § 3.71 |
| Assignee Rights Post-AIA (MPEP 324-325) Assignee as Applicant Signature | 37 CFR § 3.71(b) |
| Assignee as Applicant Signature Establishing Ownership Who May File Reissue | 37 CFR § 3.73 |
| Assignee as Applicant Signature Certificates of Change of Name Establishing Ownership | 37 CFR § 3.73(c) |
| AIA Effective Dates Assignee as Applicant Signature Assignment and Ownership (MPEP Chapter 300) PTAB Contested Case Procedures | 37 CFR § 3.81 |
| Assignee Rights Post-AIA (MPEP 324-325) Assignee as Applicant Signature Sufficient Proprietary Interest | MPEP § 301 |
| Assignee Rights Post-AIA (MPEP 324-325) Assignee as Applicant Signature Establishing Ownership Sufficient Proprietary Interest Who May File Reissue | MPEP § 325 |
| – | MPEP § 409.01(a) |
| – | MPEP § 409.02 |
| Processing Fees | MPEP § 409.05 |
| – | MPEP § 602.01(c)(2) |
| AIA Effective Dates | MPEP § 605.02 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 605.01 — Applicant for Application filed on or after September 16, 2012
Source: USPTO605.01 Applicant for Application filed on or after September 16, 2012 [R-10.2019]
[Editor Note: See MPEP § 605.02 for information regarding the applicant in applications filed before September 16, 2012.]
The owner or assignee of a patent property can take action in a patent application as the applicant. The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom in the absence of an assignment. 37 CFR 3.73. An assignee who is not the original applicant must become the applicant under 37 CFR 1.46 in order to request or take action in a patent application. See MPEP § 325.
I. DEFINITION OF APPLICANT37 CFR 1.42 Applicant for patent.
- (a) The word “applicant” when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.
- (b) If a person is applying for a patent as provided in § 1.46, the word “applicant” refers to 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, who is applying for a patent under § 1.46 and not the inventor.
- (c) If fewer than all joint inventors are applying for a patent as provided in § 1.45, the phrase “the applicant” means the joint inventors who are applying for the patent without the omitted inventor(s).
- (d) Any person having authority may deliver an application and fees to the Office on behalf of the applicant. However, an oath or declaration, or substitute statement in lieu of an oath or declaration, may be executed only in accordance with § 1.63 or 1.64 , a correspondence address may be provided only in accordance with § 1.33(a), and amendments and other papers must be signed in accordance with § 1.33(b).
- (e) The Office may require additional information where there is a question concerning ownership or interest in an application, and a showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.
37 CFR 1.43 Application for patent by a legal representative of a deceased or legally incapacitated inventor.
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. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
37 CFR 1.45 Application for patent by joint inventors.
- (a) Joint inventors must apply for a patent jointly, and each must make an inventor’s oath or declaration as required by § 1.63, except as provided for in § 1.64. 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 § 1.64 concerning the execution of a substitute statement by the other joint inventor or inventors in lieu of an oath or declaration.
- (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.
- (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.
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.
- (c)
- (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.
- (d) Even if the whole or a part interest in the invention or in the patent to be issued is assigned or obligated to be assigned, an oath or declaration must be executed by the actual inventor or each actual joint inventor, except as provided for in § 1.64. See§ 1.64 concerning the execution of a substitute statement by an assignee, 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.
- (e) If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81. Where a real party in interest has filed an application under § 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.
- (f) The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette.
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 APPLICANTWhere 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 APPLICANTFor 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.
