Patent Law FAQ

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

• The inventor(s)
• An assignee to whom the inventor has assigned the invention
• An obligated assignee to whom the inventor is under an obligation to assign the invention
• A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

• The inventor(s)
• An assignee to whom the inventor has assigned the invention
• An obligated assignee to whom the inventor is under an obligation to assign the invention
• A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

The America Invents Act (AIA) significantly changed who can be considered a patent applicant for applications filed on or after September 16, 2012. MPEP § 605 outlines these changes:

“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”

Key changes include:

• Assignees can now be listed as the applicant
• Persons with sufficient proprietary interest can file on behalf of the inventor
• The inventor is no longer required to be listed as the applicant

These changes allow for more flexibility in patent application filing and prosecution, particularly benefiting companies and organizations that routinely file patent applications.

To learn more:

• AIA
• America Invents Act
• patent applicant
• patent law changes
• patent reform

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

• The inventor(s)
• An assignee to whom the inventor has assigned the invention
• An obligated assignee to whom the inventor is under an obligation to assign the invention
• A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

The America Invents Act (AIA) significantly changed who can be considered a patent applicant for applications filed on or after September 16, 2012. MPEP § 605 outlines these changes:

“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”

Key changes include:

• Assignees can now be listed as the applicant
• Persons with sufficient proprietary interest can file on behalf of the inventor
• The inventor is no longer required to be listed as the applicant

These changes allow for more flexibility in patent application filing and prosecution, particularly benefiting companies and organizations that routinely file patent applications.

To learn more:

• AIA
• America Invents Act
• patent applicant
• patent law changes
• patent reform