What additional requirements are there for correcting inventorship after an Office action on the merits?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

When correcting inventorship after an Office action on the merits has been given or mailed in the application, there are additional requirements:

• Pay the fee set forth in 37 CFR 1.17(d) in addition to the processing fee
• This additional fee is not required if inventors are being deleted due to claim cancellation

The MPEP states: 37 CFR 1.48(c) provides that the fee set forth in 37 CFR 1.17(d) (in addition to the processing fee) is required when requests under 37 CFR 1.48 are filed after the Office action on the merits has been given or mailed in the application. However, the fee will not be required when inventors are deleted if the request to correct or change inventorship is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.