How does the inventorship requirement differ for continuation applications filed before and after September 16, 2012?

The inventorship requirements for continuation applications differ based on whether they were filed before or after September 16, 2012:

• For applications filed on or after September 16, 2012: The inventorship is determined by the information provided in the application data sheet (ADS) filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If no ADS is filed, the inventorship is set by the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement signed under 37 CFR 1.33(b) specifying the correct inventorship.
• For applications filed before September 16, 2012: The inventorship was generally set by the copy of the executed oath or declaration from the prior application, unless accompanied by a statement requesting deletion of the names of persons who are not inventors in the continuation application.

The MPEP states for post-AIA applications:

37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.

These changes reflect the America Invents Act’s modifications to U.S. patent law, simplifying the process for correcting inventorship in many cases.

For more information on America Invents Act, visit: America Invents Act.

For more information on continuation application, visit: continuation application.

For more information on inventorship, visit: inventorship.

For more information on patent application requirements, visit: patent application requirements.