What types of requests can be made to correct inventorship in a nonprovisional patent application?

Requests to correct inventorship in a nonprovisional patent application can be made under 37 CFR 1.48 if filed on or after September 16, 2012. The Manual of Patent Examining Procedure (MPEP) states: “Requests under 37 CFR 1.48 filed on or after September 16, 2012 to correct inventorship in a nonprovisional application.“ These requests are decided…

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What is the significance of inventorship in overcoming a 35 U.S.C. 102(e) rejection?

What is the significance of inventorship in overcoming a 35 U.S.C. 102(e) rejection? Inventorship plays a crucial role in overcoming a 35 U.S.C. 102(e) rejection. The MPEP 715.01(a) states: “If the application and reference have at least one common inventor, the inventorship is not identical, and the effective filing date of the application is later…

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What is the exception to all inventors signing an affidavit or declaration under 37 CFR 1.131(a)?

What is the exception to all inventors signing an affidavit or declaration under 37 CFR 1.131(a)? While generally all inventors must sign an affidavit or declaration under 37 CFR 1.131(a), there is an important exception. According to MPEP 715.04: “An affidavit or declaration under 37 CFR 1.131(a) may be signed by less than all named…

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Can a patent examiner request information about inventorship?

Can a patent examiner request information about inventorship? Yes, a patent examiner can request information about inventorship during the examination process. The MPEP 704.11 explicitly states that examiners may request: “Names of persons to whom the invention was disclosed.” This information may be requested to: Clarify the correct inventorship of the application Determine if there…

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What is the significance of the EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc. case in MPEP 715.01(a)?

The EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc. case is cited in MPEP 715.01(a) to illustrate the importance of providing sufficient context and evidence when submitting inventor declarations. The case highlights that a bare assertion of inventorship, especially when made long after the invention, is not enough to overcome a rejection. The MPEP…

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What should be included in a 37 CFR 1.132 declaration when the reference is a U.S. patent or patent application publication?

When the reference used in a rejection is a U.S. patent or patent application publication, a 37 CFR 1.132 declaration should include specific information to effectively overcome the rejection. MPEP 715.01(a) states: Where the reference is a U.S. patent or patent application publication which includes a claim reciting the subject matter relied upon in a…

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