Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 400 – Representative of Applicant or Owner (5)
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:
MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:
- Assignment: A completed transfer of rights in the invention.
- Agreement to Assign: A promise to transfer rights in the future, often conditional.
For an assignment, MPEP 409.03(f) states:
“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”
For an agreement to assign:
“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”
Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.
To learn more:
To learn more:
For applications filed before September 16, 2012, the process for an assignee to revoke a power of attorney is different. According to the MPEP:
In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an ‘irrevocable’ right to prosecute the application had been given as in some government owned applications.
The assignee must establish their right to take action as provided in pre-AIA 37 CFR 3.73(b). Once this is done, a power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees.
Form PTO/SB/80 can be used by an assignee to revoke a power of attorney and appoint a new one. The assignee would sign the power of attorney, and either the assignee or the newly appointed practitioner would sign a statement under pre-AIA 37 CFR 3.73(b).
To learn more:
No, this specific requirement does not apply to all patent applications. The MPEP clearly states:
‘[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]’
This means that the requirement to provide the last known address of a nonsigning inventor is only applicable to pre-AIA applications filed before September 16, 2012, under 37 CFR 1.47. For applications filed on or after this date, different rules may apply, and applicants should consult the current USPTO guidelines or seek legal advice.
To learn more:
To learn more:
In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios:
- New power of attorney without explicit revocation: “When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.”
- Assignee filing new power of attorney: “If the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee.”
- Change in Customer Number: “If a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second.”
In all these cases, the most recently filed power of attorney will control, effectively revoking or replacing the previous ones.
To learn more:
Patent Law (7)
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:
MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:
- Assignment: A completed transfer of rights in the invention.
- Agreement to Assign: A promise to transfer rights in the future, often conditional.
For an assignment, MPEP 409.03(f) states:
“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”
For an agreement to assign:
“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”
Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.
To learn more:
To learn more:
For applications filed before September 16, 2012, the process for an assignee to revoke a power of attorney is different. According to the MPEP:
In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an ‘irrevocable’ right to prosecute the application had been given as in some government owned applications.
The assignee must establish their right to take action as provided in pre-AIA 37 CFR 3.73(b). Once this is done, a power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees.
Form PTO/SB/80 can be used by an assignee to revoke a power of attorney and appoint a new one. The assignee would sign the power of attorney, and either the assignee or the newly appointed practitioner would sign a statement under pre-AIA 37 CFR 3.73(b).
To learn more:
No, this specific requirement does not apply to all patent applications. The MPEP clearly states:
‘[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]’
This means that the requirement to provide the last known address of a nonsigning inventor is only applicable to pre-AIA applications filed before September 16, 2012, under 37 CFR 1.47. For applications filed on or after this date, different rules may apply, and applicants should consult the current USPTO guidelines or seek legal advice.
To learn more:
To learn more:
The use of a copy of an oath or declaration in a continuation-in-part (CIP) application depends on the filing date of the CIP application:
- For CIP applications filed on or after September 16, 2012:
- A copy of an oath or declaration from the prior application may be used.
- However, the oath or declaration must comply with the requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012.
- A new oath or declaration may be necessary if the prior application was filed before September 16, 2012.
- For CIP applications filed before September 16, 2012:
- Generally, a new oath or declaration is required.
- The copy of the oath or declaration from the prior application is typically not sufficient due to the new matter introduced in a CIP.
According to MPEP 602.05(a): For applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64.
It’s important to ensure that the oath or declaration covers all the subject matter in the CIP application, including any new matter added.
To learn more:
In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios:
- New power of attorney without explicit revocation: “When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.”
- Assignee filing new power of attorney: “If the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee.”
- Change in Customer Number: “If a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second.”
In all these cases, the most recently filed power of attorney will control, effectively revoking or replacing the previous ones.
To learn more:
For continuation or divisional applications filed before September 16, 2012, a new oath or declaration is generally not required if certain conditions are met. According to pre-AIA 37 CFR 1.63(d):
A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
- The prior nonprovisional application contained a proper oath or declaration
- The continuation or divisional application was filed by all or fewer than all inventors named in the prior application
- The specification and drawings contain no new matter
- A copy of the executed oath or declaration from the prior application is submitted
However, a new oath or declaration is required if naming an inventor not named in the prior application. The MPEP states: A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
To learn more:
Patent Procedure (7)
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:
MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:
- Assignment: A completed transfer of rights in the invention.
- Agreement to Assign: A promise to transfer rights in the future, often conditional.
For an assignment, MPEP 409.03(f) states:
“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”
For an agreement to assign:
“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”
Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.
To learn more:
To learn more:
For applications filed before September 16, 2012, the process for an assignee to revoke a power of attorney is different. According to the MPEP:
In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an ‘irrevocable’ right to prosecute the application had been given as in some government owned applications.
The assignee must establish their right to take action as provided in pre-AIA 37 CFR 3.73(b). Once this is done, a power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees.
Form PTO/SB/80 can be used by an assignee to revoke a power of attorney and appoint a new one. The assignee would sign the power of attorney, and either the assignee or the newly appointed practitioner would sign a statement under pre-AIA 37 CFR 3.73(b).
To learn more:
No, this specific requirement does not apply to all patent applications. The MPEP clearly states:
‘[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]’
This means that the requirement to provide the last known address of a nonsigning inventor is only applicable to pre-AIA applications filed before September 16, 2012, under 37 CFR 1.47. For applications filed on or after this date, different rules may apply, and applicants should consult the current USPTO guidelines or seek legal advice.
To learn more:
To learn more:
The use of a copy of an oath or declaration in a continuation-in-part (CIP) application depends on the filing date of the CIP application:
- For CIP applications filed on or after September 16, 2012:
- A copy of an oath or declaration from the prior application may be used.
- However, the oath or declaration must comply with the requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012.
- A new oath or declaration may be necessary if the prior application was filed before September 16, 2012.
- For CIP applications filed before September 16, 2012:
- Generally, a new oath or declaration is required.
- The copy of the oath or declaration from the prior application is typically not sufficient due to the new matter introduced in a CIP.
According to MPEP 602.05(a): For applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64.
It’s important to ensure that the oath or declaration covers all the subject matter in the CIP application, including any new matter added.
To learn more:
In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios:
- New power of attorney without explicit revocation: “When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.”
- Assignee filing new power of attorney: “If the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee.”
- Change in Customer Number: “If a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second.”
In all these cases, the most recently filed power of attorney will control, effectively revoking or replacing the previous ones.
To learn more:
For continuation or divisional applications filed before September 16, 2012, a new oath or declaration is generally not required if certain conditions are met. According to pre-AIA 37 CFR 1.63(d):
A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
- The prior nonprovisional application contained a proper oath or declaration
- The continuation or divisional application was filed by all or fewer than all inventors named in the prior application
- The specification and drawings contain no new matter
- A copy of the executed oath or declaration from the prior application is submitted
However, a new oath or declaration is required if naming an inventor not named in the prior application. The MPEP states: A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
To learn more: