MPEP § 605.02 — Applicant for Application Filed Before September 16, 2012 (Annotated Rules)
§605.02 Applicant for Application Filed Before September 16, 2012
This page consolidates and annotates all enforceable requirements under MPEP § 605.02, 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 Before September 16, 2012
This section addresses Applicant for Application Filed Before September 16, 2012. Primary authority: 37 CFR 1.41, 37 CFR 1.45, and 37 CFR 1.41(a). Contains: 4 guidance statements and 1 other statement.
Key Rules
Assignee as Applicant Signature
(a) A patent is applied for in the name or names of the actual inventor or inventors. (1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63, except as provided for in §§ 1.53(d)(4) and 1.63(d). If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b), unless applicant files a paper, including the processing fee set forth in § 1.17(i), supplying or changing the name or names of the inventor or inventors.
(c) Any person authorized by the applicant may physically or electronically deliver an application for patent to the Office on behalf of the inventor or inventors, but an oath or declaration for the application (§ 1.63) can only be made in accordance with § 1.64.
(d) A showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.
Pre-AIA 37 CFR 1.41(a) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as provided for in 37 CFR 1.53(d)(4) and pre-AIA 37 CFR 1.63(d). The oath or declaration may be filed on the filing date of the application or on a later date. If an oath or declaration is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to 37 CFR 1.53(b), unless an applicant files a paper under pre-AIA 37 CFR 1.41(a)(1) accompanied by the processing fee set forth in 37 CFR 1.17(i) supplying or changing the name or names of the inventor or inventors.
AIA vs Pre-AIA Practice
(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.
(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.
For assignments of application by inventor, see MPEP § 301.
AIA Effective Dates
For applications filed before September 16, 2012, if the application is filed by another, see MPEP § 409.03 et seq.
For applications filed before September 16, 2012 by another on behalf of a deceased or legally incapacitated inventor, see MPEP § 409.01(b). For applications filed before September 16, 2012 where at least one inventor is unavailable, see MPEP § 409.03 et seq.
For applications filed before September 16, 2012 by another on behalf of a deceased or legally incapacitated inventor, see MPEP § 409.01(b). For applications filed before September 16, 2012 where at least one inventor is unavailable, see MPEP § 409.03 et seq.
[Editor Note: See MPEP § 605.01 for information regarding the applicant in applications filed on or after September 16, 2012.]
Inventor's Oath/Declaration Requirements
(a) Joint inventors must apply for a patent jointly and each must make the required oath or declaration; neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47.
Pre-AIA 37 CFR 1.41(a) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as provided for in 37 CFR 1.53(d)(4) and pre-AIA 37 CFR 1.63(d). The oath or declaration may be filed on the filing date of the application or on a later date. If an oath or declaration is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to 37 CFR 1.53(b), unless an applicant files a paper under pre-AIA 37 CFR 1.41(a)(1) accompanied by the processing fee set forth in 37 CFR 1.17(i) supplying or changing the name or names of the inventor or inventors.
Oath/Declaration in National Stage
(a) A patent is applied for in the name or names of the actual inventor or inventors.
- (1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63, except as provided for in §§ 1.53(d)(4) and 1.63(d). If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b), unless applicant files a paper, including the processing fee set forth in § 1.17(i), supplying or changing the name or names of the inventor or inventors.
- (2) The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1). If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying or changing the name or names of the inventor or inventors.
- (3) In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63 or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name, residence, and citizenship of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
- (4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis. See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv) (§ 1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371).
Nonprovisional Applications
(a) A patent is applied for in the name or names of the actual inventor or inventors. (1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63, except as provided for in §§ 1.53(d)(4) and 1.63(d). If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b), unless applicant files a paper, including the processing fee set forth in § 1.17(i), supplying or changing the name or names of the inventor or inventors.
Provisional Application Requirements
(a) A patent is applied for in the name or names of the actual inventor or inventors.
…
(2) The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1).
12-Month Pendency Period
(a) A patent is applied for in the name or names of the actual inventor or inventors.
…
If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying or changing the name or names of the inventor or inventors.
Conversion to Nonprovisional
(a) A patent is applied for in the name or names of the actual inventor or inventors.
…
(3) In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63 or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name, residence, and citizenship of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
Nationals and Residents
(a) A patent is applied for in the name or names of the actual inventor or inventors.
…
(4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis. See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv) (§ 1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371).
AIA Definition of Applicant (37 CFR 1.42)
(b) Unless the contrary is indicated the word “applicant” when used in these sections refers to the inventor or joint inventors who are applying for a patent, or to the person mentioned in §§ 1.42, 1.43 or 1.47 who is applying for a patent in place of the inventor.
AIA Oath/Declaration Requirements (37 CFR 1.63)
Pre-AIA 37 CFR 1.41(a) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as provided for in 37 CFR 1.53(d)(4) and pre-AIA 37 CFR 1.63(d). The oath or declaration may be filed on the filing date of the application or on a later date. If an oath or declaration is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to 37 CFR 1.53(b), unless an applicant files a paper under pre-AIA 37 CFR 1.41(a)(1) accompanied by the processing fee set forth in 37 CFR 1.17(i) supplying or changing the name or names of the inventor or inventors.
Inventorship Under AIA
For correction of inventorship, see MPEP § 602.01(c) et seq.
Citations
| Primary topic | Citation |
|---|---|
| AIA vs Pre-AIA Practice | 35 U.S.C. § 116 |
| Nationals and Residents Oath/Declaration in National Stage | 35 U.S.C. § 371 |
| AIA Oath/Declaration Requirements (37 CFR 1.63) Assignee as Applicant Signature Inventor's Oath/Declaration Requirements Nonprovisional Applications Oath/Declaration in National Stage | 37 CFR § 1.17(i) |
| 12-Month Pendency Period Oath/Declaration in National Stage Provisional Application Requirements | 37 CFR § 1.17(q) |
| AIA Oath/Declaration Requirements (37 CFR 1.63) Assignee as Applicant Signature Inventor's Oath/Declaration Requirements | 37 CFR § 1.41(a) |
| AIA Oath/Declaration Requirements (37 CFR 1.63) Assignee as Applicant Signature Inventor's Oath/Declaration Requirements | 37 CFR § 1.41(a)(1) |
| AIA Definition of Applicant (37 CFR 1.42) | 37 CFR § 1.42 |
| Inventor's Oath/Declaration Requirements | 37 CFR § 1.47 |
| Nationals and Residents Oath/Declaration in National Stage | 37 CFR § 1.48(f)(1) |
| Nationals and Residents Oath/Declaration in National Stage | 37 CFR § 1.497(d) |
| 12-Month Pendency Period Conversion to Nonprovisional Oath/Declaration in National Stage Provisional Application Requirements | 37 CFR § 1.51(c)(1) |
| AIA Oath/Declaration Requirements (37 CFR 1.63) Assignee as Applicant Signature Conversion to Nonprovisional Inventor's Oath/Declaration Requirements Nonprovisional Applications Oath/Declaration in National Stage | 37 CFR § 1.53(b) |
| 12-Month Pendency Period Conversion to Nonprovisional Oath/Declaration in National Stage Provisional Application Requirements | 37 CFR § 1.53(c) |
| AIA Oath/Declaration Requirements (37 CFR 1.63) Assignee as Applicant Signature Inventor's Oath/Declaration Requirements Nonprovisional Applications Oath/Declaration in National Stage | 37 CFR § 1.53(d)(4) |
| AIA Oath/Declaration Requirements (37 CFR 1.63) Assignee as Applicant Signature Conversion to Nonprovisional Inventor's Oath/Declaration Requirements Nonprovisional Applications Oath/Declaration in National Stage | 37 CFR § 1.63 |
| AIA Oath/Declaration Requirements (37 CFR 1.63) Assignee as Applicant Signature Inventor's Oath/Declaration Requirements | 37 CFR § 1.63(d) |
| Assignee as Applicant Signature | 37 CFR § 1.64 |
| AIA vs Pre-AIA Practice | MPEP § 301 |
| AIA Effective Dates | MPEP § 409.01(b) |
| AIA Effective Dates | MPEP § 409.03 |
| Inventorship Under AIA | MPEP § 602.01(c) |
| AIA Effective Dates | MPEP § 605.01 |
| Nationals and Residents Oath/Declaration in National Stage | PCT Rule 4.17(iv) |
| Nationals and Residents Oath/Declaration in National Stage | PCT Rule 92bis |
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 § 605.02 — Applicant for Application Filed Before September 16, 2012
Source: USPTO605.02 Applicant for Application Filed Before September 16, 2012 [R-07.2015]
[Editor Note: See MPEP § 605.01 for information regarding the applicant in applications filed on or after September 16, 2012.]
37 CFR 1.41 (pre-AIA) Applicant for patent.
- (a) A patent is applied for in the name or names of the actual
inventor or inventors.
- (1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63, except as provided for in §§ 1.53(d)(4) and 1.63(d). If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b), unless applicant files a paper, including the processing fee set forth in § 1.17(i), supplying or changing the name or names of the inventor or inventors.
- (2) The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1). If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying or changing the name or names of the inventor or inventors.
- (3) In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63 or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name, residence, and citizenship of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
- (4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis. See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv) (§ 1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371).
- (b) Unless the contrary is indicated the word “applicant” when used in these sections refers to the inventor or joint inventors who are applying for a patent, or to the person mentioned in §§ 1.42, 1.43 or 1.47 who is applying for a patent in place of the inventor.
- (c) Any person authorized by the applicant may physically or electronically deliver an application for patent to the Office on behalf of the inventor or inventors, but an oath or declaration for the application (§ 1.63) can only be made in accordance with § 1.64.
- (d) A showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.
37 CFR 1.45 (pre-AIA) Joint inventors.
- (a) Joint inventors must apply for a patent jointly and each must make the required oath or declaration; neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47.
- (b) Inventors may apply for a patent jointly even though
- (1) They did not physically work together or at the same time,
- (2) Each inventor did not make the same type or amount of contribution, or
- (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
- (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.
Pre-AIA 37 CFR 1.41(a) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as provided for in 37 CFR 1.53(d)(4) and pre-AIA 37 CFR 1.63(d). The oath or declaration may be filed on the filing date of the application or on a later date. If an oath or declaration is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to 37 CFR 1.53(b), unless an applicant files a paper under pre-AIA 37 CFR 1.41(a)(1) accompanied by the processing fee set forth in 37 CFR 1.17(i) supplying or changing the name or names of the inventor or inventors.
For correction of inventorship, see MPEP § 602.01(c)et seq.
For applications filed before September 16, 2012, if the application is filed by another, see MPEP § 409.03et seq.
For assignments of application by inventor, see MPEP § 301.
For applications filed before September 16, 2012 by another on behalf of a deceased or legally incapacitated inventor, see MPEP § 409.01(b). For applications filed before September 16, 2012 where at least one inventor is unavailable, see MPEP § 409.03et seq.