What role does a court order play in correcting inventorship during reexamination?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs 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. A court order can play a significant role in correcting inventorship during reexamination. According to MPEP 2250.02 and 37 CFR 1.530(l)(1) : “When it appears in a patent being reexamined that the correct inventor or inventors were not named, the Director may, […] on order of a court before which such matter is called in question, include in the reexamination certificate to be issued under § 1.570 or § 1.997 an amendment naming only the actual inventor or inventors.” This means that if a court determines the correct inventorship of a patent under reexamination, the USPTO will respect that decision and include the corrected inventorship in the reexamination certificate. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Petition for Correcting Inventorship During Reexamination Must Comply with 37 CFR 1.324 MPEP 2250.02 Required Reexamination Certificate Contains Inventorship Change MPEP 2250.02 Failure to Name Correct Inventive Entity Is Correctable by Reissue MPEP 2250.02 Status Identifier Requirement for Proposed Amendments MPEP 2250 Permitted No Amendments After Patent Expiration During Reexamination MPEP 2250 Patent Owner May Request Inventorship Change After Reexamination MPEP 2250.02 Permitted Amendments Must Reflect Prior Certificate Changes MPEP 2250 Required Proper Amendment Manner for Patent Owner MPEP 2250 Permitted How Reexamination Certificate Shows Additions and Deletions MPEP 2250 Claim Numbering During Reexamination MPEP 2250 Other Related FAQs 5 FAQs Collapse How can inventorship be corrected during a reexamination proceeding? What happens if a reexamination proceeding concludes without issuing a reexamination certificate? What are the requirements ...