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 More

What 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 More

Can 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 More

What 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