Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority (4)
For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.
As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”
This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.
For more information on foreign priority, visit: foreign priority.
For more information on joint inventors, visit: joint inventors.
The inventorship requirements for claiming foreign priority are specific and important. Here are the key points:
- The U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.
- Priority rights do not exist if the foreign and U.S. applications have completely different sole inventors.
- Joint inventors can each claim the benefit of their separately filed foreign applications.
The MPEP clarifies: Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.
This requirement ensures a direct connection between the foreign priority application and the U.S. application claiming its benefit.
To learn more:
Yes, a sole inventor can file a continuation-in-part (CIP) application based on an earlier application with joint inventors, provided certain conditions are met. The MPEP 201.08 states:
“A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78.”
This situation might occur when one of the joint inventors from the original application independently develops additional subject matter. The key requirements are:
- The CIP must meet all other conditions of 35 U.S.C. 120 and 37 CFR 1.78.
- The sole inventor must be one of the joint inventors named in the prior application.
- The CIP should contain new matter not disclosed in the prior application.
It’s important to ensure proper attribution and compliance with all USPTO requirements when filing such a CIP.
For more information on joint inventors, visit: joint inventors.
Yes, a continuation-in-part (CIP) application can have different inventors than the parent application, but there must be at least one common inventor. The MPEP provides guidance on this:
“A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”
This flexibility allows for situations where new inventors contribute to the additional subject matter in the CIP, or where some inventors from the original application are no longer involved in the new developments.
For more information on joint inventors, visit: joint inventors.
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (2)
For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives.
As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
This means that:
1. A sole inventor in the U.S. can claim priority to a foreign application where they are the sole inventor or one of joint inventors.
2. Joint inventors in the U.S. can claim priority to a foreign application filed by any one or more of them.
3. A U.S. application cannot claim priority to a foreign application with completely different inventors.
It’s important to note that while the inventorship must overlap, it doesn’t have to be identical between the U.S. and foreign applications.
To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:
- The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
- The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
- The later-filed application must contain a specific reference to the prior-filed application
- The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78
MPEP 201 - Types of Applications (2)
Yes, a sole inventor can file a continuation-in-part (CIP) application based on an earlier application with joint inventors, provided certain conditions are met. The MPEP 201.08 states:
“A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78.”
This situation might occur when one of the joint inventors from the original application independently develops additional subject matter. The key requirements are:
- The CIP must meet all other conditions of 35 U.S.C. 120 and 37 CFR 1.78.
- The sole inventor must be one of the joint inventors named in the prior application.
- The CIP should contain new matter not disclosed in the prior application.
It’s important to ensure proper attribution and compliance with all USPTO requirements when filing such a CIP.
For more information on joint inventors, visit: joint inventors.
Yes, a continuation-in-part (CIP) application can have different inventors than the parent application, but there must be at least one common inventor. The MPEP provides guidance on this:
“A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”
This flexibility allows for situations where new inventors contribute to the additional subject matter in the CIP, or where some inventors from the original application are no longer involved in the new developments.
For more information on joint inventors, visit: joint inventors.
MPEP 211 - Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (1)
To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:
- The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
- The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
- The later-filed application must contain a specific reference to the prior-filed application
- The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78
MPEP 213-Right of Priority of Foreign Application (2)
For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.
As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”
This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.
For more information on foreign priority, visit: foreign priority.
For more information on joint inventors, visit: joint inventors.
For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives.
As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
This means that:
1. A sole inventor in the U.S. can claim priority to a foreign application where they are the sole inventor or one of joint inventors.
2. Joint inventors in the U.S. can claim priority to a foreign application filed by any one or more of them.
3. A U.S. application cannot claim priority to a foreign application with completely different inventors.
It’s important to note that while the inventorship must overlap, it doesn’t have to be identical between the U.S. and foreign applications.
MPEP 300 - Ownership and Assignment (2)
Joint ownership in patents and patent applications occurs when two or more parties share ownership rights. According to MPEP 301:
“Joint inventors are treated as joint owners of the invention unless there is an assignment.”
Key aspects of joint ownership include:
- Each joint owner has the right to make, use, sell, and license the invention without consent from other owners.
- Profits do not need to be shared unless there’s a specific agreement.
- All joint owners must agree to sell or assign the entire patent to a third party.
- In infringement suits, all joint owners must be joined as plaintiffs.
It’s important for joint owners to have clear agreements in place to avoid potential conflicts and ensure proper management of the patent rights.
For more information on joint inventors, visit: joint inventors.
For more information on joint ownership, visit: joint ownership.
For more information on patent rights, visit: patent rights.
For more information on USPTO, visit: USPTO.
When multiple inventors collaborate on an invention, the patent can be issued to them jointly. The MPEP 308 provides guidance on this:
‘If more than one inventor is named in the application, the patent will issue to the inventors jointly.’
This means that all named inventors share ownership of the patent equally, unless they have agreed otherwise or assigned their rights to another party. Each joint inventor has the right to make, use, sell, or license the invention without the consent of the other inventors, subject to any agreements between them.
For more information on joint inventors, visit: joint inventors.
For more information on patent issuance, visit: patent issuance.
MPEP 301-Ownership/Assignability of Patents and Applications (1)
Joint ownership in patents and patent applications occurs when two or more parties share ownership rights. According to MPEP 301:
“Joint inventors are treated as joint owners of the invention unless there is an assignment.”
Key aspects of joint ownership include:
- Each joint owner has the right to make, use, sell, and license the invention without consent from other owners.
- Profits do not need to be shared unless there’s a specific agreement.
- All joint owners must agree to sell or assign the entire patent to a third party.
- In infringement suits, all joint owners must be joined as plaintiffs.
It’s important for joint owners to have clear agreements in place to avoid potential conflicts and ensure proper management of the patent rights.
For more information on joint inventors, visit: joint inventors.
For more information on joint ownership, visit: joint ownership.
For more information on patent rights, visit: patent rights.
For more information on USPTO, visit: USPTO.
MPEP 308 - Issue to Applicant (1)
When multiple inventors collaborate on an invention, the patent can be issued to them jointly. The MPEP 308 provides guidance on this:
‘If more than one inventor is named in the application, the patent will issue to the inventors jointly.’
This means that all named inventors share ownership of the patent equally, unless they have agreed otherwise or assigned their rights to another party. Each joint inventor has the right to make, use, sell, or license the invention without the consent of the other inventors, subject to any agreements between them.
For more information on joint inventors, visit: joint inventors.
For more information on patent issuance, visit: patent issuance.
MPEP 400 - Representative of Applicant or Owner (15)
The date September 16, 2012, is significant because it marks a change in the applicability of certain patent application procedures. As noted in MPEP 409.03(a):
“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]”
This date corresponds to the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. For applications filed on or after this date, different rules and procedures apply regarding joint inventorship and the handling of situations where not all inventors are available or willing to sign the application. It’s crucial for applicants to be aware of which set of rules applies to their application based on the filing date.
To learn more:
When filing a patent application with an unavailable joint inventor, you must include the last known address of the nonsigning inventor. As stated in MPEP 409.03(a):
“The last known address of the nonsigning joint inventor must be stated.”
For more details on providing this information, refer to MPEP 409.03(e). This requirement helps the USPTO in potential future communications and establishes that efforts were made to locate the inventor.
To learn more:
When a patent application has multiple inventors and one of them dies, the process for continuing the application depends on whether there’s a power of attorney in place. According to MPEP 409.01(a):
When an application is being prosecuted by joint inventor-applicants without a joint inventor-applicant or patent practitioner having been granted a power of attorney, and a joint inventor-applicant dies after filing the application, the living joint inventor(s) who are the applicant must submit proof that the other joint inventor-applicant is dead.
Here’s what happens in this scenario:
- The surviving inventors must provide proof of the deceased inventor’s death to the USPTO.
- If no legal representative of the deceased inventor intervenes, only the signatures of the living inventors are required on USPTO documents.
- If a legal representative of the deceased inventor intervenes, they must submit a substitute statement complying with 37 CFR 1.64.
- Once a legal representative intervenes, signatures from both the living inventors and the legal representative are required on USPTO documents.
- This requirement continues until the legal representative and living inventors appoint a new representative.
It’s crucial for the surviving inventors to understand these requirements to ensure the application process continues smoothly.
To learn more:
What happens if not all joint inventors sign a power of attorney in a patent application?
If not all joint inventors sign a power of attorney in a patent application, the power of attorney is not effective. According to MPEP 402.10:
A power of attorney must be signed by all of the applicants, or all of the assignees of the entire interest, or all parties entitled to prosecute the application, unless otherwise specified.
This means that for the power of attorney to be valid, it must be signed by all parties with the right to prosecute the application. If some inventors haven’t signed, the USPTO will treat the application as if no power of attorney has been appointed.
To learn more:
What documents can serve as proof of proprietary interest for joint inventors?
For joint inventors, proof of proprietary interest can be established through various documents. According to MPEP 409.03(f), acceptable forms of proof include:
- An assignment for the entire right, title, and interest in the application from all inventors to one or more joint inventors
- Written statements from all inventors that they have assigned their rights in the application to one or more joint inventors
- Other evidence showing that one or more joint inventors are the only inventor(s) who have the right to prosecute the application
The MPEP states: ‘Where one of several joint inventors is deceased or cannot be reached, a statement by the prosecuting inventor as to the facts, including the names of the other joint inventors, may be accepted as sufficient proof of proprietary interest.’ This provision allows for flexibility in cases where obtaining documentation from all inventors is challenging.
To learn more:
To file an application under pre-AIA 37 CFR 1.47(a) when at least one joint inventor is available, the following requirements must be met:
- All available joint inventors must make an oath/declaration for themselves and on behalf of the nonsigning inventor
- Proof that the nonsigning inventor cannot be found/reached after diligent effort or refuses to execute the application
- The last known address of the nonsigning inventor must be stated
As stated in MPEP 409.03(a): In addition to other requirements of law (pre-AIA 35 U.S.C. 111(a) and 115), an application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements…
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When filing a patent application with at least one unavailable joint inventor under pre-AIA 37 CFR 1.47(a), the following requirements must be met:
- All available joint inventors must make an oath or declaration for themselves and on behalf of the nonsigning inventor.
- Proof must be provided that the nonsigning inventor cannot be found or refuses to execute the application.
- The last known address of the nonsigning inventor must be stated.
As stated in MPEP 409.03(a):
“An application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements: (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 […] and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64.”
It’s important to note that this section is not applicable to applications filed on or after September 16, 2012.
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When an inventor dies during the prosecution of a patent application, the USPTO has specific procedures in place:
- If the inventor died after filing the application, the legal representative (executor or administrator of the estate) can proceed with the application.
- The legal representative must submit evidence of their authority, such as Letters Testamentary or Letters of Administration.
- If there are joint inventors, the surviving inventors can continue the prosecution.
- The oath or declaration requirement can be fulfilled by the legal representative or the joint inventors.
As stated in MPEP 409.01: “If an inventor dies during the prosecution of an application, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration.”
To learn more:
Joint inventors who are the applicant can appoint a power of attorney in a patent application using Form PTO/AIA/81. This form allows joint inventors to give one or more joint inventor-applicants the power of attorney to sign on behalf of all joint inventor-applicants.
According to the MPEP:
“Form PTO/AIA/81 may be used by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney to sign on behalf of all joint inventor-applicants. Since powers of attorney must be signed by ‘the applicant,’ all joint inventor-applicants must sign a power of attorney, including the joint inventor(s) who are being given power of attorney.”
For example, if there are four joint inventors (A, B, C, and D) who are all applicants, and they wish to appoint inventor-applicant C as having power of attorney, all four inventors (A, B, C, and D) must sign the power of attorney form appointing C.
It’s important to note that all joint inventor-applicants must sign the power of attorney, even those who are being given the power to act on behalf of the others.
To learn more:
How can inventors and joint inventors file patent applications after September 16, 2012?
For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:
- An inventor or joint inventor may file an application.
- A legal representative of a deceased or legally incapacitated inventor may file an application.
- An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.
As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.
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To prove that a joint inventor cannot be found or refuses to sign the patent application, you must provide evidence of your diligent efforts. According to MPEP 409.03(a):
“The application must be accompanied by proof that the nonsigning inventor (1) cannot be found or reached after diligent effort or (2) refuses to execute the application papers.”
For specific guidance on what constitutes acceptable proof, refer to MPEP 409.03(d). This may include documented attempts to contact the inventor, returned mail, or written statements from the unavailable inventor indicating their refusal to sign.
To learn more:
How can a joint inventor apply for a patent if another joint inventor is deceased or legally incapacitated?
If a joint inventor is deceased or legally incapacitated, the other joint inventor(s) can still apply for a patent by following these steps:
- File the application naming the deceased or legally incapacitated inventor
- Submit a statement identifying the unavailable inventor and their last known address
- Show that the signing inventor is obligated to assign the patent to the same entity as the unavailable inventor, or has sufficient proprietary interest
- Submit the oath or declaration by the available inventor(s)
As stated in MPEP 409.01(a): “In the case of a deceased or legally incapacitated joint inventor, the applicant should identify the unavailable inventor on an application data sheet (ADS) or a substitute statement.”
This process allows the patent application to move forward despite the unavailability of one of the joint inventors.
To learn more:
Yes, a power of attorney can be revoked by fewer than all of the applicants, but with certain conditions. According to MPEP 402.05:
‘A power of attorney may be revoked by fewer than all of the applicants (or fewer than all patent owners in a reexamination proceeding or supplemental examination proceeding) if the power was granted by fewer than all of the applicants or patent owners.’
This means:
- If the original power of attorney was granted by all applicants, it must be revoked by all applicants.
- If the original power was granted by a subset of applicants, that same subset can revoke it.
- In cases of joint inventors, careful consideration must be given to who originally granted the power.
To learn more:
Yes, a patent application can be filed even if one joint inventor refuses to sign, provided certain conditions are met. According to MPEP 409.03(a):
“Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application ‘on behalf of’ themselves and on behalf of a joint inventor who ‘cannot be found or reached after diligent effort’ or who refuses to ‘join in an application.'”
To file the application, the available joint inventors must make an oath or declaration on their own behalf and on behalf of the nonsigning inventor. Additionally, proof must be provided that the nonsigning inventor refuses to execute the application papers. This process allows the patent application to proceed despite the refusal of one joint inventor to participate.
To learn more:
Can a joint inventor apply for a patent if another joint inventor is unavailable or refuses to join?
Yes, a joint inventor can apply for a patent even if another joint inventor is unavailable or refuses to join the application. The MPEP 409 states: ‘If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor.’
The process involves:
- Filing the application on behalf of all inventors
- Submitting a petition under 37 CFR 1.45
- Providing proof of the unavailability or refusal of the non-signing inventor
- Including an oath or declaration by the participating inventor(s)
This provision ensures that the patent application process can proceed even when not all joint inventors are available or willing to participate.
For more information on joint inventors, visit: joint inventors.
MPEP 500 - Receipt and Handling of Mail and Papers (1)
For joint inventor applicants, MPEP 509.04(c) states that “each joint inventor should sign a separate copy of the relevant micro entity certification form.” However, there is an exception:
“If one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form.”
This appointment can be made using USPTO form PTO/AIA/81, titled “Power Of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address”, available on the USPTO forms Web page.
To learn more:
Patent Law (37)
Several parties may execute a substitute statement under specific circumstances:
- The inventor’s legal representative under 37 CFR 1.43, if the inventor is deceased or legally incapacitated
- Other joint inventors under 37 CFR 1.45, if the inventor refuses to execute the oath or declaration or cannot be found
- An applicant under 37 CFR 1.46 who is the assignee or party to whom the inventor is obligated to assign
- An applicant under 37 CFR 1.46 who shows sufficient proprietary interest in the invention
It’s important to note that “All parties having any portion of the ownership in the patent must act together as a composite entity in patent matters before the Office.“
To learn more:
The date September 16, 2012, is significant because it marks a change in the applicability of certain patent application procedures. As noted in MPEP 409.03(a):
“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]”
This date corresponds to the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. For applications filed on or after this date, different rules and procedures apply regarding joint inventorship and the handling of situations where not all inventors are available or willing to sign the application. It’s crucial for applicants to be aware of which set of rules applies to their application based on the filing date.
To learn more:
What is the significance of the order of inventors listed on a patent application?
The order of inventors listed on a patent application does not affect their legal rights, but it may have other implications. According to the MPEP:
“The order of names of joint inventors in the heading of the application is not significant except in an application filed before September 16, 2012, where the order of named inventors determined the order of prosecution in the absence of an executed oath or declaration.” (MPEP 605)
While the order doesn’t impact legal rights, it’s common practice to list the primary contributor first. This can be important for:
- Academic recognition: In scientific publications, the first-listed inventor may receive more credit.
- Industry norms: Some fields have conventions about inventor order.
- Alphabetical order: Sometimes used to avoid implications of contribution levels.
Ultimately, all listed inventors have equal rights to the patent, regardless of their order on the application.
To learn more:
For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.
As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”
This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.
For more information on foreign priority, visit: foreign priority.
For more information on joint inventors, visit: joint inventors.
For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives.
As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
This means that:
1. A sole inventor in the U.S. can claim priority to a foreign application where they are the sole inventor or one of joint inventors.
2. Joint inventors in the U.S. can claim priority to a foreign application filed by any one or more of them.
3. A U.S. application cannot claim priority to a foreign application with completely different inventors.
It’s important to note that while the inventorship must overlap, it doesn’t have to be identical between the U.S. and foreign applications.
What is the definition of ‘applicant’ in patent applications?
According to MPEP 605, the term ‘applicant’ refers to the inventor or joint inventors who are applying for a patent. The MPEP states: ‘The applicant for a patent is the inventor or joint inventors.’ This definition applies to patent applications filed on or after September 16, 2012. For applications filed before this date, the applicant could be the assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest in the matter.
To learn more:
When filing a patent application with an unavailable joint inventor, you must include the last known address of the nonsigning inventor. As stated in MPEP 409.03(a):
“The last known address of the nonsigning joint inventor must be stated.”
For more details on providing this information, refer to MPEP 409.03(e). This requirement helps the USPTO in potential future communications and establishes that efforts were made to locate the inventor.
To learn more:
When a patent application has multiple inventors and one of them dies, the process for continuing the application depends on whether there’s a power of attorney in place. According to MPEP 409.01(a):
When an application is being prosecuted by joint inventor-applicants without a joint inventor-applicant or patent practitioner having been granted a power of attorney, and a joint inventor-applicant dies after filing the application, the living joint inventor(s) who are the applicant must submit proof that the other joint inventor-applicant is dead.
Here’s what happens in this scenario:
- The surviving inventors must provide proof of the deceased inventor’s death to the USPTO.
- If no legal representative of the deceased inventor intervenes, only the signatures of the living inventors are required on USPTO documents.
- If a legal representative of the deceased inventor intervenes, they must submit a substitute statement complying with 37 CFR 1.64.
- Once a legal representative intervenes, signatures from both the living inventors and the legal representative are required on USPTO documents.
- This requirement continues until the legal representative and living inventors appoint a new representative.
It’s crucial for the surviving inventors to understand these requirements to ensure the application process continues smoothly.
To learn more:
What happens if not all joint inventors sign a power of attorney in a patent application?
If not all joint inventors sign a power of attorney in a patent application, the power of attorney is not effective. According to MPEP 402.10:
A power of attorney must be signed by all of the applicants, or all of the assignees of the entire interest, or all parties entitled to prosecute the application, unless otherwise specified.
This means that for the power of attorney to be valid, it must be signed by all parties with the right to prosecute the application. If some inventors haven’t signed, the USPTO will treat the application as if no power of attorney has been appointed.
To learn more:
What happens if joint inventors can’t agree on filing a patent application?
If joint inventors cannot agree on filing a patent application, it can lead to complications. According to MPEP 602.09, ‘Each joint inventor may make the application for patent on behalf of himself and the other joint inventors.’ This means that any one of the joint inventors can file the application without the consent of the others. However, this situation may lead to disputes and potential legal issues. It’s generally recommended that joint inventors try to reach an agreement or seek legal counsel to resolve any disagreements before filing.
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What happens if an inventor refuses to sign an oath or declaration?
If an inventor refuses to sign an oath or declaration, the application may still proceed under certain circumstances. According to MPEP 602.09:
“If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of themselves and the nonsigning inventor.”
In such cases, the applicant must:
- File an oath or declaration on behalf of the nonsigning inventor
- Provide a statement of facts explaining the situation
- Show that the nonsigning inventor’s last known address has been stated
- Demonstrate that notice of the filing of the application has been provided to the nonsigning inventor
This process allows the application to move forward despite the lack of cooperation from one inventor.
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What documents can serve as proof of proprietary interest for joint inventors?
For joint inventors, proof of proprietary interest can be established through various documents. According to MPEP 409.03(f), acceptable forms of proof include:
- An assignment for the entire right, title, and interest in the application from all inventors to one or more joint inventors
- Written statements from all inventors that they have assigned their rights in the application to one or more joint inventors
- Other evidence showing that one or more joint inventors are the only inventor(s) who have the right to prosecute the application
The MPEP states: ‘Where one of several joint inventors is deceased or cannot be reached, a statement by the prosecuting inventor as to the facts, including the names of the other joint inventors, may be accepted as sufficient proof of proprietary interest.’ This provision allows for flexibility in cases where obtaining documentation from all inventors is challenging.
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What are the requirements for naming joint inventors in a patent application?
When naming joint inventors in a patent application, it’s important to follow specific requirements:
- All inventors must be named in the application.
- Each person listed as an inventor must have contributed to the conception of at least one claim in the application.
- The order of naming inventors is not significant.
According to MPEP 602.08(b):
“The inventors entered on the application data sheet must include each inventor’s legal name.”
It’s crucial to ensure that all inventors are properly named to avoid potential issues with patent validity later on.
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According to 37 CFR 1.45(c), for provisional applications:
- Each named inventor must have contributed to the subject matter disclosed in the application.
- The application is considered a joint application under 35 U.S.C. 116.
The MPEP clarifies: Because provisional applications may be filed without claims, 37 CFR 1.45(c) states that each inventor named in a joint provisional application must have made a contribution to the subject matter disclosed in the application.
This ensures that all named inventors have contributed to the disclosed invention, even in the absence of formal claims.
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To file an application under pre-AIA 37 CFR 1.47(a) when at least one joint inventor is available, the following requirements must be met:
- All available joint inventors must make an oath/declaration for themselves and on behalf of the nonsigning inventor
- Proof that the nonsigning inventor cannot be found/reached after diligent effort or refuses to execute the application
- The last known address of the nonsigning inventor must be stated
As stated in MPEP 409.03(a): In addition to other requirements of law (pre-AIA 35 U.S.C. 111(a) and 115), an application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements…
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When filing a patent application with at least one unavailable joint inventor under pre-AIA 37 CFR 1.47(a), the following requirements must be met:
- All available joint inventors must make an oath or declaration for themselves and on behalf of the nonsigning inventor.
- Proof must be provided that the nonsigning inventor cannot be found or refuses to execute the application.
- The last known address of the nonsigning inventor must be stated.
As stated in MPEP 409.03(a):
“An application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements: (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 […] and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64.”
It’s important to note that this section is not applicable to applications filed on or after September 16, 2012.
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To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:
- The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
- The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
- The later-filed application must contain a specific reference to the prior-filed application
- The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78
The inventorship requirements for claiming foreign priority are specific and important. Here are the key points:
- The U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.
- Priority rights do not exist if the foreign and U.S. applications have completely different sole inventors.
- Joint inventors can each claim the benefit of their separately filed foreign applications.
The MPEP clarifies: Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.
This requirement ensures a direct connection between the foreign priority application and the U.S. application claiming its benefit.
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For joint inventor applicants, MPEP 509.04(c) states that “each joint inventor should sign a separate copy of the relevant micro entity certification form.” However, there is an exception:
“If one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form.”
This appointment can be made using USPTO form PTO/AIA/81, titled “Power Of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address”, available on the USPTO forms Web page.
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When an inventor dies during the prosecution of a patent application, the USPTO has specific procedures in place:
- If the inventor died after filing the application, the legal representative (executor or administrator of the estate) can proceed with the application.
- The legal representative must submit evidence of their authority, such as Letters Testamentary or Letters of Administration.
- If there are joint inventors, the surviving inventors can continue the prosecution.
- The oath or declaration requirement can be fulfilled by the legal representative or the joint inventors.
As stated in MPEP 409.01: “If an inventor dies during the prosecution of an application, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration.”
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How does the USPTO determine if inventors are truly joint inventors?
The U.S. Patent and Trademark Office (USPTO) relies on the information provided by the applicants to determine joint inventorship. According to MPEP 602.09, ‘The specification must contain the names of all joint inventors.’ However, the USPTO does not typically investigate the accuracy of joint inventorship claims unless there is evidence of impropriety. The determination of joint inventorship is based on the 35 U.S.C. 116, which states that inventors may apply for a patent jointly even if:
- They did not physically work together or at the same time,
- Each did not make the same type or amount of contribution, or
- Each did not make a contribution to the subject matter of every claim of the patent.
If disputes arise, they are typically resolved through legal proceedings rather than by the USPTO itself.
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Joint ownership in patents and patent applications occurs when two or more parties share ownership rights. According to MPEP 301:
“Joint inventors are treated as joint owners of the invention unless there is an assignment.”
Key aspects of joint ownership include:
- Each joint owner has the right to make, use, sell, and license the invention without consent from other owners.
- Profits do not need to be shared unless there’s a specific agreement.
- All joint owners must agree to sell or assign the entire patent to a third party.
- In infringement suits, all joint owners must be joined as plaintiffs.
It’s important for joint owners to have clear agreements in place to avoid potential conflicts and ensure proper management of the patent rights.
For more information on joint inventors, visit: joint inventors.
For more information on joint ownership, visit: joint ownership.
For more information on patent rights, visit: patent rights.
For more information on USPTO, visit: USPTO.
For patent applications filed on or after September 16, 2012, joint inventors have more flexibility in executing oaths or declarations. The MPEP states: “For applications filed on or after September 16, 2012, joint inventors may execute separate oaths or declarations in which only the person executing the oath or declaration is identified if an ADS is filed that provides the required inventor information.” This means each inventor can submit their own oath or declaration, naming only themselves, as long as a complete Application Data Sheet (ADS) is filed with all inventor information. However, if such an ADS is not filed, then each oath or declaration must name all of the inventors, as per 37 CFR 1.63(a) and (b).
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Joint inventors who are the applicant can appoint a power of attorney in a patent application using Form PTO/AIA/81. This form allows joint inventors to give one or more joint inventor-applicants the power of attorney to sign on behalf of all joint inventor-applicants.
According to the MPEP:
“Form PTO/AIA/81 may be used by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney to sign on behalf of all joint inventor-applicants. Since powers of attorney must be signed by ‘the applicant,’ all joint inventor-applicants must sign a power of attorney, including the joint inventor(s) who are being given power of attorney.”
For example, if there are four joint inventors (A, B, C, and D) who are all applicants, and they wish to appoint inventor-applicant C as having power of attorney, all four inventors (A, B, C, and D) must sign the power of attorney form appointing C.
It’s important to note that all joint inventor-applicants must sign the power of attorney, even those who are being given the power to act on behalf of the others.
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How can inventors and joint inventors file patent applications after September 16, 2012?
For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:
- An inventor or joint inventor may file an application.
- A legal representative of a deceased or legally incapacitated inventor may file an application.
- An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.
As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.
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To prove that a joint inventor cannot be found or refuses to sign the patent application, you must provide evidence of your diligent efforts. According to MPEP 409.03(a):
“The application must be accompanied by proof that the nonsigning inventor (1) cannot be found or reached after diligent effort or (2) refuses to execute the application papers.”
For specific guidance on what constitutes acceptable proof, refer to MPEP 409.03(d). This may include documented attempts to contact the inventor, returned mail, or written statements from the unavailable inventor indicating their refusal to sign.
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How can a joint inventor apply for a patent if another joint inventor is deceased or legally incapacitated?
If a joint inventor is deceased or legally incapacitated, the other joint inventor(s) can still apply for a patent by following these steps:
- File the application naming the deceased or legally incapacitated inventor
- Submit a statement identifying the unavailable inventor and their last known address
- Show that the signing inventor is obligated to assign the patent to the same entity as the unavailable inventor, or has sufficient proprietary interest
- Submit the oath or declaration by the available inventor(s)
As stated in MPEP 409.01(a): “In the case of a deceased or legally incapacitated joint inventor, the applicant should identify the unavailable inventor on an application data sheet (ADS) or a substitute statement.”
This process allows the patent application to move forward despite the unavailability of one of the joint inventors.
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When multiple inventors collaborate on an invention, the patent can be issued to them jointly. The MPEP 308 provides guidance on this:
‘If more than one inventor is named in the application, the patent will issue to the inventors jointly.’
This means that all named inventors share ownership of the patent equally, unless they have agreed otherwise or assigned their rights to another party. Each joint inventor has the right to make, use, sell, or license the invention without the consent of the other inventors, subject to any agreements between them.
For more information on joint inventors, visit: joint inventors.
For more information on patent issuance, visit: patent issuance.
How are inventorship disputes resolved in joint inventor situations?
Inventorship disputes in joint inventor situations can be complex and may require legal intervention. While the MPEP 602.09 doesn’t provide a specific resolution process, it emphasizes the importance of proper inventorship:
“The inventors named in a nonprovisional application must execute an oath or declaration… All named inventors must be named in the executed oath or declaration.”
To resolve inventorship disputes:
- Parties should first attempt to reach an agreement among themselves
- If unsuccessful, they may need to seek legal counsel
- The USPTO may require evidence or a court order to make inventorship changes
- In some cases, the matter may need to be resolved in federal court
It’s crucial to resolve these disputes promptly, as incorrect inventorship can invalidate a patent. If a dispute arises, it’s advisable to consult with a patent attorney to navigate the resolution process properly.
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Can the order of joint inventors’ names be changed after filing a patent application?
Yes, the order of joint inventors’ names can be changed after filing a patent application, but it requires a specific process. The MPEP 602.09 states:
“The order of names of joint patentees in the heading of the patent is taken from the order in which the names appear in the application papers unless changed by request.”
To change the order of inventors’ names:
- Submit a request to the USPTO
- Provide a statement from all the joint inventors agreeing to the change
- Pay any required fees
It’s important to note that changing the order doesn’t affect inventorship rights but may impact how the patent is cited in literature. The request should be made before the patent is granted for it to appear in the correct order on the issued patent.
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Yes, joint inventors can use a single non-English oath or declaration under certain circumstances. The MPEP 602.06 states:
“The Office will accept a single non-English language oath or declaration where there are joint inventors, of which only some understand English but all understand the non-English language of the oath or declaration.”
This means that as long as all joint inventors understand the language used in the oath or declaration, even if some also understand English, a single non-English document can be submitted for all inventors.
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Can joint inventors file separate patent applications for the same invention?
No, joint inventors cannot file separate patent applications for the same invention. The MPEP 602.09 states: ‘Joint inventors must apply for a patent jointly and each must make the required oath or declaration.’ This means that all joint inventors must be included in a single patent application for their shared invention. Filing separate applications for the same invention could lead to legal complications and potential rejection of the applications. If inventors have made separate improvements to the invention, they may be able to file separate applications for those specific improvements, but not for the jointly invented core invention.
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Yes, a sole inventor can file a continuation-in-part (CIP) application based on an earlier application with joint inventors, provided certain conditions are met. The MPEP 201.08 states:
“A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78.”
This situation might occur when one of the joint inventors from the original application independently develops additional subject matter. The key requirements are:
- The CIP must meet all other conditions of 35 U.S.C. 120 and 37 CFR 1.78.
- The sole inventor must be one of the joint inventors named in the prior application.
- The CIP should contain new matter not disclosed in the prior application.
It’s important to ensure proper attribution and compliance with all USPTO requirements when filing such a CIP.
For more information on joint inventors, visit: joint inventors.
Yes, a power of attorney can be revoked by fewer than all of the applicants, but with certain conditions. According to MPEP 402.05:
‘A power of attorney may be revoked by fewer than all of the applicants (or fewer than all patent owners in a reexamination proceeding or supplemental examination proceeding) if the power was granted by fewer than all of the applicants or patent owners.’
This means:
- If the original power of attorney was granted by all applicants, it must be revoked by all applicants.
- If the original power was granted by a subset of applicants, that same subset can revoke it.
- In cases of joint inventors, careful consideration must be given to who originally granted the power.
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Yes, a patent application can be filed even if one joint inventor refuses to sign, provided certain conditions are met. According to MPEP 409.03(a):
“Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application ‘on behalf of’ themselves and on behalf of a joint inventor who ‘cannot be found or reached after diligent effort’ or who refuses to ‘join in an application.'”
To file the application, the available joint inventors must make an oath or declaration on their own behalf and on behalf of the nonsigning inventor. Additionally, proof must be provided that the nonsigning inventor refuses to execute the application papers. This process allows the patent application to proceed despite the refusal of one joint inventor to participate.
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Can a joint inventor apply for a patent if another joint inventor is unavailable or refuses to join?
Yes, a joint inventor can apply for a patent even if another joint inventor is unavailable or refuses to join the application. The MPEP 409 states: ‘If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor.’
The process involves:
- Filing the application on behalf of all inventors
- Submitting a petition under 37 CFR 1.45
- Providing proof of the unavailability or refusal of the non-signing inventor
- Including an oath or declaration by the participating inventor(s)
This provision ensures that the patent application process can proceed even when not all joint inventors are available or willing to participate.
For more information on joint inventors, visit: joint inventors.
Yes, a continuation-in-part (CIP) application can have different inventors than the parent application, but there must be at least one common inventor. The MPEP provides guidance on this:
“A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”
This flexibility allows for situations where new inventors contribute to the additional subject matter in the CIP, or where some inventors from the original application are no longer involved in the new developments.
For more information on joint inventors, visit: joint inventors.
Patent Procedure (37)
Several parties may execute a substitute statement under specific circumstances:
- The inventor’s legal representative under 37 CFR 1.43, if the inventor is deceased or legally incapacitated
- Other joint inventors under 37 CFR 1.45, if the inventor refuses to execute the oath or declaration or cannot be found
- An applicant under 37 CFR 1.46 who is the assignee or party to whom the inventor is obligated to assign
- An applicant under 37 CFR 1.46 who shows sufficient proprietary interest in the invention
It’s important to note that “All parties having any portion of the ownership in the patent must act together as a composite entity in patent matters before the Office.“
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The date September 16, 2012, is significant because it marks a change in the applicability of certain patent application procedures. As noted in MPEP 409.03(a):
“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]”
This date corresponds to the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. For applications filed on or after this date, different rules and procedures apply regarding joint inventorship and the handling of situations where not all inventors are available or willing to sign the application. It’s crucial for applicants to be aware of which set of rules applies to their application based on the filing date.
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What is the significance of the order of inventors listed on a patent application?
The order of inventors listed on a patent application does not affect their legal rights, but it may have other implications. According to the MPEP:
“The order of names of joint inventors in the heading of the application is not significant except in an application filed before September 16, 2012, where the order of named inventors determined the order of prosecution in the absence of an executed oath or declaration.” (MPEP 605)
While the order doesn’t impact legal rights, it’s common practice to list the primary contributor first. This can be important for:
- Academic recognition: In scientific publications, the first-listed inventor may receive more credit.
- Industry norms: Some fields have conventions about inventor order.
- Alphabetical order: Sometimes used to avoid implications of contribution levels.
Ultimately, all listed inventors have equal rights to the patent, regardless of their order on the application.
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For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.
As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”
This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.
For more information on foreign priority, visit: foreign priority.
For more information on joint inventors, visit: joint inventors.
For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives.
As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
This means that:
1. A sole inventor in the U.S. can claim priority to a foreign application where they are the sole inventor or one of joint inventors.
2. Joint inventors in the U.S. can claim priority to a foreign application filed by any one or more of them.
3. A U.S. application cannot claim priority to a foreign application with completely different inventors.
It’s important to note that while the inventorship must overlap, it doesn’t have to be identical between the U.S. and foreign applications.
What is the definition of ‘applicant’ in patent applications?
According to MPEP 605, the term ‘applicant’ refers to the inventor or joint inventors who are applying for a patent. The MPEP states: ‘The applicant for a patent is the inventor or joint inventors.’ This definition applies to patent applications filed on or after September 16, 2012. For applications filed before this date, the applicant could be the assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest in the matter.
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When filing a patent application with an unavailable joint inventor, you must include the last known address of the nonsigning inventor. As stated in MPEP 409.03(a):
“The last known address of the nonsigning joint inventor must be stated.”
For more details on providing this information, refer to MPEP 409.03(e). This requirement helps the USPTO in potential future communications and establishes that efforts were made to locate the inventor.
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When a patent application has multiple inventors and one of them dies, the process for continuing the application depends on whether there’s a power of attorney in place. According to MPEP 409.01(a):
When an application is being prosecuted by joint inventor-applicants without a joint inventor-applicant or patent practitioner having been granted a power of attorney, and a joint inventor-applicant dies after filing the application, the living joint inventor(s) who are the applicant must submit proof that the other joint inventor-applicant is dead.
Here’s what happens in this scenario:
- The surviving inventors must provide proof of the deceased inventor’s death to the USPTO.
- If no legal representative of the deceased inventor intervenes, only the signatures of the living inventors are required on USPTO documents.
- If a legal representative of the deceased inventor intervenes, they must submit a substitute statement complying with 37 CFR 1.64.
- Once a legal representative intervenes, signatures from both the living inventors and the legal representative are required on USPTO documents.
- This requirement continues until the legal representative and living inventors appoint a new representative.
It’s crucial for the surviving inventors to understand these requirements to ensure the application process continues smoothly.
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What happens if not all joint inventors sign a power of attorney in a patent application?
If not all joint inventors sign a power of attorney in a patent application, the power of attorney is not effective. According to MPEP 402.10:
A power of attorney must be signed by all of the applicants, or all of the assignees of the entire interest, or all parties entitled to prosecute the application, unless otherwise specified.
This means that for the power of attorney to be valid, it must be signed by all parties with the right to prosecute the application. If some inventors haven’t signed, the USPTO will treat the application as if no power of attorney has been appointed.
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What happens if joint inventors can’t agree on filing a patent application?
If joint inventors cannot agree on filing a patent application, it can lead to complications. According to MPEP 602.09, ‘Each joint inventor may make the application for patent on behalf of himself and the other joint inventors.’ This means that any one of the joint inventors can file the application without the consent of the others. However, this situation may lead to disputes and potential legal issues. It’s generally recommended that joint inventors try to reach an agreement or seek legal counsel to resolve any disagreements before filing.
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What happens if an inventor refuses to sign an oath or declaration?
If an inventor refuses to sign an oath or declaration, the application may still proceed under certain circumstances. According to MPEP 602.09:
“If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of themselves and the nonsigning inventor.”
In such cases, the applicant must:
- File an oath or declaration on behalf of the nonsigning inventor
- Provide a statement of facts explaining the situation
- Show that the nonsigning inventor’s last known address has been stated
- Demonstrate that notice of the filing of the application has been provided to the nonsigning inventor
This process allows the application to move forward despite the lack of cooperation from one inventor.
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What documents can serve as proof of proprietary interest for joint inventors?
For joint inventors, proof of proprietary interest can be established through various documents. According to MPEP 409.03(f), acceptable forms of proof include:
- An assignment for the entire right, title, and interest in the application from all inventors to one or more joint inventors
- Written statements from all inventors that they have assigned their rights in the application to one or more joint inventors
- Other evidence showing that one or more joint inventors are the only inventor(s) who have the right to prosecute the application
The MPEP states: ‘Where one of several joint inventors is deceased or cannot be reached, a statement by the prosecuting inventor as to the facts, including the names of the other joint inventors, may be accepted as sufficient proof of proprietary interest.’ This provision allows for flexibility in cases where obtaining documentation from all inventors is challenging.
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What are the requirements for naming joint inventors in a patent application?
When naming joint inventors in a patent application, it’s important to follow specific requirements:
- All inventors must be named in the application.
- Each person listed as an inventor must have contributed to the conception of at least one claim in the application.
- The order of naming inventors is not significant.
According to MPEP 602.08(b):
“The inventors entered on the application data sheet must include each inventor’s legal name.”
It’s crucial to ensure that all inventors are properly named to avoid potential issues with patent validity later on.
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According to 37 CFR 1.45(c), for provisional applications:
- Each named inventor must have contributed to the subject matter disclosed in the application.
- The application is considered a joint application under 35 U.S.C. 116.
The MPEP clarifies: Because provisional applications may be filed without claims, 37 CFR 1.45(c) states that each inventor named in a joint provisional application must have made a contribution to the subject matter disclosed in the application.
This ensures that all named inventors have contributed to the disclosed invention, even in the absence of formal claims.
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To file an application under pre-AIA 37 CFR 1.47(a) when at least one joint inventor is available, the following requirements must be met:
- All available joint inventors must make an oath/declaration for themselves and on behalf of the nonsigning inventor
- Proof that the nonsigning inventor cannot be found/reached after diligent effort or refuses to execute the application
- The last known address of the nonsigning inventor must be stated
As stated in MPEP 409.03(a): In addition to other requirements of law (pre-AIA 35 U.S.C. 111(a) and 115), an application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements…
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When filing a patent application with at least one unavailable joint inventor under pre-AIA 37 CFR 1.47(a), the following requirements must be met:
- All available joint inventors must make an oath or declaration for themselves and on behalf of the nonsigning inventor.
- Proof must be provided that the nonsigning inventor cannot be found or refuses to execute the application.
- The last known address of the nonsigning inventor must be stated.
As stated in MPEP 409.03(a):
“An application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements: (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 […] and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64.”
It’s important to note that this section is not applicable to applications filed on or after September 16, 2012.
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To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:
- The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
- The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
- The later-filed application must contain a specific reference to the prior-filed application
- The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78
The inventorship requirements for claiming foreign priority are specific and important. Here are the key points:
- The U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.
- Priority rights do not exist if the foreign and U.S. applications have completely different sole inventors.
- Joint inventors can each claim the benefit of their separately filed foreign applications.
The MPEP clarifies: Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.
This requirement ensures a direct connection between the foreign priority application and the U.S. application claiming its benefit.
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For joint inventor applicants, MPEP 509.04(c) states that “each joint inventor should sign a separate copy of the relevant micro entity certification form.” However, there is an exception:
“If one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form.”
This appointment can be made using USPTO form PTO/AIA/81, titled “Power Of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address”, available on the USPTO forms Web page.
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When an inventor dies during the prosecution of a patent application, the USPTO has specific procedures in place:
- If the inventor died after filing the application, the legal representative (executor or administrator of the estate) can proceed with the application.
- The legal representative must submit evidence of their authority, such as Letters Testamentary or Letters of Administration.
- If there are joint inventors, the surviving inventors can continue the prosecution.
- The oath or declaration requirement can be fulfilled by the legal representative or the joint inventors.
As stated in MPEP 409.01: “If an inventor dies during the prosecution of an application, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration.”
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How does the USPTO determine if inventors are truly joint inventors?
The U.S. Patent and Trademark Office (USPTO) relies on the information provided by the applicants to determine joint inventorship. According to MPEP 602.09, ‘The specification must contain the names of all joint inventors.’ However, the USPTO does not typically investigate the accuracy of joint inventorship claims unless there is evidence of impropriety. The determination of joint inventorship is based on the 35 U.S.C. 116, which states that inventors may apply for a patent jointly even if:
- They did not physically work together or at the same time,
- Each did not make the same type or amount of contribution, or
- Each did not make a contribution to the subject matter of every claim of the patent.
If disputes arise, they are typically resolved through legal proceedings rather than by the USPTO itself.
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Joint ownership in patents and patent applications occurs when two or more parties share ownership rights. According to MPEP 301:
“Joint inventors are treated as joint owners of the invention unless there is an assignment.”
Key aspects of joint ownership include:
- Each joint owner has the right to make, use, sell, and license the invention without consent from other owners.
- Profits do not need to be shared unless there’s a specific agreement.
- All joint owners must agree to sell or assign the entire patent to a third party.
- In infringement suits, all joint owners must be joined as plaintiffs.
It’s important for joint owners to have clear agreements in place to avoid potential conflicts and ensure proper management of the patent rights.
For more information on joint inventors, visit: joint inventors.
For more information on joint ownership, visit: joint ownership.
For more information on patent rights, visit: patent rights.
For more information on USPTO, visit: USPTO.
For patent applications filed on or after September 16, 2012, joint inventors have more flexibility in executing oaths or declarations. The MPEP states: “For applications filed on or after September 16, 2012, joint inventors may execute separate oaths or declarations in which only the person executing the oath or declaration is identified if an ADS is filed that provides the required inventor information.” This means each inventor can submit their own oath or declaration, naming only themselves, as long as a complete Application Data Sheet (ADS) is filed with all inventor information. However, if such an ADS is not filed, then each oath or declaration must name all of the inventors, as per 37 CFR 1.63(a) and (b).
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Joint inventors who are the applicant can appoint a power of attorney in a patent application using Form PTO/AIA/81. This form allows joint inventors to give one or more joint inventor-applicants the power of attorney to sign on behalf of all joint inventor-applicants.
According to the MPEP:
“Form PTO/AIA/81 may be used by joint inventors who are the applicant to give one or more joint inventor-applicants power of attorney to sign on behalf of all joint inventor-applicants. Since powers of attorney must be signed by ‘the applicant,’ all joint inventor-applicants must sign a power of attorney, including the joint inventor(s) who are being given power of attorney.”
For example, if there are four joint inventors (A, B, C, and D) who are all applicants, and they wish to appoint inventor-applicant C as having power of attorney, all four inventors (A, B, C, and D) must sign the power of attorney form appointing C.
It’s important to note that all joint inventor-applicants must sign the power of attorney, even those who are being given the power to act on behalf of the others.
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How can inventors and joint inventors file patent applications after September 16, 2012?
For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:
- An inventor or joint inventor may file an application.
- A legal representative of a deceased or legally incapacitated inventor may file an application.
- An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.
As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.
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To prove that a joint inventor cannot be found or refuses to sign the patent application, you must provide evidence of your diligent efforts. According to MPEP 409.03(a):
“The application must be accompanied by proof that the nonsigning inventor (1) cannot be found or reached after diligent effort or (2) refuses to execute the application papers.”
For specific guidance on what constitutes acceptable proof, refer to MPEP 409.03(d). This may include documented attempts to contact the inventor, returned mail, or written statements from the unavailable inventor indicating their refusal to sign.
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How can a joint inventor apply for a patent if another joint inventor is deceased or legally incapacitated?
If a joint inventor is deceased or legally incapacitated, the other joint inventor(s) can still apply for a patent by following these steps:
- File the application naming the deceased or legally incapacitated inventor
- Submit a statement identifying the unavailable inventor and their last known address
- Show that the signing inventor is obligated to assign the patent to the same entity as the unavailable inventor, or has sufficient proprietary interest
- Submit the oath or declaration by the available inventor(s)
As stated in MPEP 409.01(a): “In the case of a deceased or legally incapacitated joint inventor, the applicant should identify the unavailable inventor on an application data sheet (ADS) or a substitute statement.”
This process allows the patent application to move forward despite the unavailability of one of the joint inventors.
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When multiple inventors collaborate on an invention, the patent can be issued to them jointly. The MPEP 308 provides guidance on this:
‘If more than one inventor is named in the application, the patent will issue to the inventors jointly.’
This means that all named inventors share ownership of the patent equally, unless they have agreed otherwise or assigned their rights to another party. Each joint inventor has the right to make, use, sell, or license the invention without the consent of the other inventors, subject to any agreements between them.
For more information on joint inventors, visit: joint inventors.
For more information on patent issuance, visit: patent issuance.
How are inventorship disputes resolved in joint inventor situations?
Inventorship disputes in joint inventor situations can be complex and may require legal intervention. While the MPEP 602.09 doesn’t provide a specific resolution process, it emphasizes the importance of proper inventorship:
“The inventors named in a nonprovisional application must execute an oath or declaration… All named inventors must be named in the executed oath or declaration.”
To resolve inventorship disputes:
- Parties should first attempt to reach an agreement among themselves
- If unsuccessful, they may need to seek legal counsel
- The USPTO may require evidence or a court order to make inventorship changes
- In some cases, the matter may need to be resolved in federal court
It’s crucial to resolve these disputes promptly, as incorrect inventorship can invalidate a patent. If a dispute arises, it’s advisable to consult with a patent attorney to navigate the resolution process properly.
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Can the order of joint inventors’ names be changed after filing a patent application?
Yes, the order of joint inventors’ names can be changed after filing a patent application, but it requires a specific process. The MPEP 602.09 states:
“The order of names of joint patentees in the heading of the patent is taken from the order in which the names appear in the application papers unless changed by request.”
To change the order of inventors’ names:
- Submit a request to the USPTO
- Provide a statement from all the joint inventors agreeing to the change
- Pay any required fees
It’s important to note that changing the order doesn’t affect inventorship rights but may impact how the patent is cited in literature. The request should be made before the patent is granted for it to appear in the correct order on the issued patent.
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Yes, joint inventors can use a single non-English oath or declaration under certain circumstances. The MPEP 602.06 states:
“The Office will accept a single non-English language oath or declaration where there are joint inventors, of which only some understand English but all understand the non-English language of the oath or declaration.”
This means that as long as all joint inventors understand the language used in the oath or declaration, even if some also understand English, a single non-English document can be submitted for all inventors.
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Can joint inventors file separate patent applications for the same invention?
No, joint inventors cannot file separate patent applications for the same invention. The MPEP 602.09 states: ‘Joint inventors must apply for a patent jointly and each must make the required oath or declaration.’ This means that all joint inventors must be included in a single patent application for their shared invention. Filing separate applications for the same invention could lead to legal complications and potential rejection of the applications. If inventors have made separate improvements to the invention, they may be able to file separate applications for those specific improvements, but not for the jointly invented core invention.
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Yes, a sole inventor can file a continuation-in-part (CIP) application based on an earlier application with joint inventors, provided certain conditions are met. The MPEP 201.08 states:
“A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78.”
This situation might occur when one of the joint inventors from the original application independently develops additional subject matter. The key requirements are:
- The CIP must meet all other conditions of 35 U.S.C. 120 and 37 CFR 1.78.
- The sole inventor must be one of the joint inventors named in the prior application.
- The CIP should contain new matter not disclosed in the prior application.
It’s important to ensure proper attribution and compliance with all USPTO requirements when filing such a CIP.
For more information on joint inventors, visit: joint inventors.
Yes, a power of attorney can be revoked by fewer than all of the applicants, but with certain conditions. According to MPEP 402.05:
‘A power of attorney may be revoked by fewer than all of the applicants (or fewer than all patent owners in a reexamination proceeding or supplemental examination proceeding) if the power was granted by fewer than all of the applicants or patent owners.’
This means:
- If the original power of attorney was granted by all applicants, it must be revoked by all applicants.
- If the original power was granted by a subset of applicants, that same subset can revoke it.
- In cases of joint inventors, careful consideration must be given to who originally granted the power.
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Yes, a patent application can be filed even if one joint inventor refuses to sign, provided certain conditions are met. According to MPEP 409.03(a):
“Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application ‘on behalf of’ themselves and on behalf of a joint inventor who ‘cannot be found or reached after diligent effort’ or who refuses to ‘join in an application.'”
To file the application, the available joint inventors must make an oath or declaration on their own behalf and on behalf of the nonsigning inventor. Additionally, proof must be provided that the nonsigning inventor refuses to execute the application papers. This process allows the patent application to proceed despite the refusal of one joint inventor to participate.
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Can a joint inventor apply for a patent if another joint inventor is unavailable or refuses to join?
Yes, a joint inventor can apply for a patent even if another joint inventor is unavailable or refuses to join the application. The MPEP 409 states: ‘If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor.’
The process involves:
- Filing the application on behalf of all inventors
- Submitting a petition under 37 CFR 1.45
- Providing proof of the unavailability or refusal of the non-signing inventor
- Including an oath or declaration by the participating inventor(s)
This provision ensures that the patent application process can proceed even when not all joint inventors are available or willing to participate.
For more information on joint inventors, visit: joint inventors.
Yes, a continuation-in-part (CIP) application can have different inventors than the parent application, but there must be at least one common inventor. The MPEP provides guidance on this:
“A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”
This flexibility allows for situations where new inventors contribute to the additional subject matter in the CIP, or where some inventors from the original application are no longer involved in the new developments.
For more information on joint inventors, visit: joint inventors.