Can a sole inventor file a continuation-in-part based on a joint inventor application?

Yes, a sole inventor can file a continuation-in-part (CIP) application based on an earlier application with joint inventors, provided certain conditions are met. The MPEP 201.08 states:

“A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78.”

This situation might occur when one of the joint inventors from the original application independently develops additional subject matter. The key requirements are:

• The CIP must meet all other conditions of 35 U.S.C. 120 and 37 CFR 1.78.
• The sole inventor must be one of the joint inventors named in the prior application.
• The CIP should contain new matter not disclosed in the prior application.

It’s important to ensure proper attribution and compliance with all USPTO requirements when filing such a CIP.

For more information on joint inventors, visit: joint inventors.