An Easy Solution to the Problem of a Non-Signing Inventor

Jun 24, 2014

A frequent worry among corporate owners of patentable inventions is that one of the inventors might withhold his signature to essentially hold the patent hostage. The reasons an inventor might do this are numerous, ranging from a desire for a greater pay check to a bit of spite after having had his employment terminated. However, this worry is largely unfounded, as patent applications can be filed without the cooperation of one of the inventors.

The United States Patent and Trademark Office (“USPTO”) requires all patent applications to include an Inventor’s Oath or Declaration (“Declaration”), signed by the inventors. This requirement seems to grant inventors leverage to withhold signatures, yet this is not so. The Declaration requirement was instituted not as a means of barring applications, but to ensure that inventions are works of independent creation. To prevent unnecessary hurdles such as an inventor holding the application hostage, the USPTO created a loophole, allowing applications to be filed absent one or more inventor’s signatures, provided at least one inventor is willing to sign. This loophole is known as a Rule 47 Petition.

A Rule 47 Petition, enabled by 37 CFR §1.47(a), is a simple filing which allows Applicants to circumvent an uncooperative inventor. This petition does not replace a Declaration, which must still be signed by at least one of the inventors and submitted to the USPTO. Rather, a Rule 47 Petition is an additional document which can be filed to allow an applicant to bypass the requirement for all inventors sign a Declaration. This petition has three requirements: the submission of a Rule 47 Petition document, payment of a requisite government fee, and submission of evidence that the inventor has refusal to sign.

A Rule 47 Petition document is a simple document found on the can USPTO website. The petition requires basic information about the application, and must be submitted along with a government fee.

The evidence required for this petition may take some time to gather, but should not be difficult to obtain. This evidence can consists of any certified documents which demonstrate that the inventor has, in fact, refused to sign following a bonafide effort to obtain his signature. The best evidence of this occurrence would be a writing from the non-signing inventor stating that he has refused to sign, even if it is in e-mail form. A signed affidavit by a member of the corporate owner who has made the bonafide effort to get the inventor to sign could also suffice, so long as it explains the circumstances around this refusal to sign. This allows corporate owners to avoid requiring the inventor to submit a writing stating his refusal, which would give the inventor the same amount of leverage this petition is designed to curb. With this evidence, the Rule 47 Petition can be submitted, and will likely be approved with considerable speed.

The Rule 47 Petition, it should be noted, only allows an applicant to bypass the Declaration requirement, but it does not constitute a transfer of ownership to the applicant. By default, all rights in an invention originate with the inventor’s, and each inventor has the right to license the invention. Non-inventors must obtain an assignment from all inventors in order to obtain exclusive rights to the patent, and the Rule 47 Petition does not constitute an assignment. To secure these rights, an assignment or litigation may still be necessary.

If you have any questions regarding: responding to patent office actions, prosecuting your patent application, conducting interviews with patent examiners, branding, trademarks, patent planning or other intellectual property matters, please contact Garcia-Zamor Intellectual Property Law, LLC.