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 MoreCan a Pre-AIA 37 CFR 1.47 application be converted to a regular application?
Yes, a Pre-AIA 37 CFR 1.47 application can be converted to a regular application if the previously non-signing inventor later submits an executed oath or declaration. The MPEP 409.03(j) states: ‘If a 37 CFR 1.47 applicant submits an executed oath or declaration of the nonsigning inventor, the executed oath or declaration should be accepted by…
Read MoreHow is refusal to join an application determined under pre-AIA 37 CFR 1.47?
Determining refusal to join an application under pre-AIA 37 CFR 1.47 involves several considerations: The inventor must be presented with the application papers. The inventor must understand what they are being asked to sign. The inventor must expressly refuse to accept the application papers. The MPEP states: ‘A refusal by an inventor to sign an…
Read MoreWhat is the difference between pre-AIA 37 CFR 1.42 and pre-AIA 37 CFR 1.47 in relation to deceased inventors?
Pre-AIA 37 CFR 1.42 and pre-AIA 37 CFR 1.47 serve different purposes in relation to deceased inventors: Pre-AIA 37 CFR 1.42: This regulation specifically addresses the situation of a deceased inventor. It allows the legal representative (executor or administrator of the estate) to make an application on behalf of the deceased inventor. Pre-AIA 37 CFR…
Read MoreHow are papers filed by a previously non-signing inventor handled in a pre-AIA 37 CFR 1.47 application?
In a pre-AIA 37 CFR 1.47 application, papers filed by an inventor who did not initially join the application are handled as follows: “Papers filed by an inventor who did not originally join in the application, and papers relating to its pre-AIA 37 CFR 1.47 status, will be placed in the file wrapper.” This means…
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 MoreWhat happens if a previously non-signing inventor decides to join a pre-AIA 37 CFR 1.47 application?
If a previously non-signing inventor decides to join a pre-AIA 37 CFR 1.47 application, they can do so by filing the appropriate documentation. The MPEP states: “In the event the previously nonsigning inventor decides to join in the application by filing an executed oath or declaration complying with pre-AIA 37 CFR 1.63, the oath or…
Read MoreWhat happens to the non-signing inventor in a Pre-AIA 37 CFR 1.47 application after acceptance?
After acceptance of a Pre-AIA 37 CFR 1.47 application, the non-signing inventor retains certain rights and responsibilities: They are considered a joint inventor and will be named on any patent that may issue. They have the right to access the application file and receive notices from the USPTO. They can still submit an executed oath…
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…
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