What constitutes a valid reason for filing under pre-AIA 37 CFR 1.47?
A valid reason for filing under pre-AIA 37 CFR 1.47 requires a diligent effort to locate or reach a nonsigning inventor. The MPEP states: ‘Where inability to find or reach a nonsigning inventor “after diligent effort” is the reason for filing under pre-AIA 37 CFR 1.47, a statement of facts should be submitted that fully…
Read MoreWhat is the requirement for stating the last known address in a pre-AIA 37 CFR 1.47 application?
In applications filed pursuant to pre-AIA 37 CFR 1.47, it is mandatory to state the last known address of the nonsigning inventor. The MPEP states: ‘An application filed pursuant to pre-AIA 37 CFR 1.47 must state the last known address of the nonsigning inventor.’ This requirement ensures that the USPTO can attempt to contact the…
Read MoreShould multiple addresses be provided for a nonsigning inventor?
While providing the last known address where the nonsigning inventor customarily receives mail is the primary requirement, the MPEP suggests that additional addresses may be beneficial: ‘Inasmuch as a nonsigning inventor is notified that an application pursuant to pre-AIA 37 CFR 1.47 has been filed on his or her behalf, other addresses at which the…
Read MoreAre nonsigning inventors entitled to a hearing in pre-AIA 37 CFR 1.47 cases?
No, nonsigning inventors are not entitled to a hearing in pre-AIA 37 CFR 1.47 cases. This is explicitly stated in MPEP 409.03(i): “A nonsigning inventor is not entitled to a hearing (Cogar v. Schuyler, 464 F.2d 747, 173 USPQ 389 (D.C. Cir. 1972))” This precedent, set by the case of Cogar v. Schuyler, establishes that…
Read MoreWhat happens if a nonsigning inventor believes they are the sole inventor?
If a nonsigning inventor believes they are the sole inventor of an invention claimed in a pre-AIA 37 CFR 1.47 application where they are named as a joint inventor, they have a specific course of action available to them. According to MPEP 409.03(i): “If a nonsigning inventor feels that he or she is the sole…
Read MoreCan a nonsigning inventor join a pre-AIA 37 CFR 1.47 application?
Yes, a nonsigning inventor can join a pre-AIA 37 CFR 1.47 application. However, there are specific requirements and limitations to this process. According to MPEP 409.03(i): “A nonsigning inventor may join in a pre-AIA 37 CFR 1.47 application. To join in the application, the nonsigning inventor must file an appropriate pre-AIA 37 CFR 1.63 oath…
Read MoreCan a nonsigning inventor revoke or grant a power of attorney?
A nonsigning inventor who subsequently joins an application cannot revoke or grant a power of attorney in certain situations. MPEP 402.05(a) explains: 37 CFR 1.64(f) provides that the submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under 37 CFR 1.43, 1.45 or 1.46 will not permit…
Read MoreCan a nonsigning inventor revoke a power of attorney in a pre-AIA 37 CFR 1.47 application?
In a pre-AIA 37 CFR 1.47 application, a nonsigning inventor has limited rights regarding the power of attorney. According to MPEP 402.05(b): A nonsigning inventor may subsequently join in a pre-AIA 37 CFR 1.47 application by submitting an oath or declaration under pre-AIA 37 CFR 1.63. However, even if the nonsigning inventor joins in the…
Read MoreIs the last known residence always the correct address to provide for a nonsigning inventor?
While the last known residence is often the appropriate address to provide, it’s not always the case. The MPEP states: ‘Ordinarily, the last known address will be the last known residence of the nonsigning inventor.’ However, the key is to provide the address where the inventor customarily receives mail. If this differs from their residence,…
Read MoreWhat rights does a nonsigning inventor have in a patent application?
A nonsigning inventor, also known as an ‘inventor designee,’ has several rights in a patent application filed under pre-AIA 37 CFR 1.47. These rights include: The right to protest their designation as an inventor The right to inspect any paper in the application The right to order copies of application documents at the price set…
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