How does joint inventorship affect the “names another inventor” requirement?
In cases of joint inventorship, the “names another inventor” requirement under AIA 35 U.S.C. 102(a)(2) is satisfied even if only one joint inventor is different between the prior art document and the application under examination. MPEP 2154.01(c) clarifies: “Thus, in the case of joint inventors, only one joint inventor needs to be different for the…
Read MoreCan joint inventors contribute differently to an invention?
Yes, joint inventors can contribute differently to an invention. The MPEP, referencing 35 U.S.C. 116, states that inventors may apply for a patent jointly even if “each did not make the same type or amount of contribution.” The MPEP further elaborates: “The fact that each of the inventors play a different role and that the…
Read MoreDo joint inventors need to contribute to every claim in a patent?
No, joint inventors do not need to contribute to every claim in a patent. The MPEP clearly states: “A joint inventor or coinventor need not make a contribution to every claim of a patent; a contribution to one claim is enough.” Furthermore, the MPEP explains that “there is no requirement that all the inventors be…
Read MoreWhat is the relevance of the inventive entity in pre-AIA 35 U.S.C. 102(e) rejections?
The inventive entity plays a crucial role in applying pre-AIA 35 U.S.C. 102(e) rejections. The MPEP states: “In order to apply a reference under pre-AIA 35 U.S.C. 102(e), the inventive entity of the application must be different from that of the cited reference.” Importantly, for applications with joint inventors, the MPEP clarifies: “Note that, where…
Read MoreWhat are the requirements for U.S. applicants filing international applications?
For international applications filed on or after September 16, 2012, there are specific requirements for U.S. applicants: Only residents or nationals of the United States can file international applications in the U.S. Receiving Office. For the designation of the United States, the applicant must be the inventor or other person as provided in 37 CFR…
Read MoreWhat are the requirements for joint inventors applying for a U.S. National Stage Application?
Joint inventors must follow specific requirements when applying for a U.S. National Stage Application. According to 37 CFR 1.45: Joint inventors must apply for a patent jointly. Each inventor must make an inventor’s oath or declaration as required by 37 CFR 1.63, except as provided for in 37 CFR 1.64. If a joint inventor refuses…
Read MoreCan there be joint inventors for a plant patent?
Yes, plant patent applications can have joint inventors. This is explicitly stated in MPEP 1604: In an application for a plant patent, there can be joint inventors. This statement is supported by the case Ex parte Kluis, 70 USPQ 165 (Bd. App. 1945), which established this precedent. To learn more: plant patent joint inventors multiple…
Read MoreWhat are the requirements for joint inventors signing affidavits or declarations?
When it comes to joint inventors signing affidavits or declarations, MPEP 717.01(c) provides specific guidance: ‘Where the affidavit or declaration is filed under 37 CFR 1.130(a) or (b), 37 CFR 1.131(a), or 37 CFR 1.132 for purposes of establishing an inventorship date, it is not necessary for all joint inventors to sign the affidavit or…
Read MoreCan a joint inventor sign an amendment without power of attorney from the other inventor?
No, a joint inventor cannot sign an amendment without proper authorization from the other inventor(s). The MPEP 714.01(a) provides an example of this situation: This applies, for instance, where the amendment is signed by only one of two joint inventors and the one signing has not been given a power of attorney by the other…
Read MoreWhat should I do if an inventor is unavailable to sign an affidavit or declaration under 37 CFR 1.131(a)?
If an inventor is unavailable to sign an affidavit or declaration under 37 CFR 1.131(a), the procedure depends on the application filing date: For applications filed before September 16, 2012: The remaining joint inventors can sign the affidavit or declaration. A petition under 37 CFR 1.183 requesting waiver of the unavailable inventor’s signature must be…
Read More