What to do When the Wrong Inventor(s) are Listed on Your Patent Application

Sep 30, 2014

Correcting inventorship on a patent is possible but requires careful analysis of the application status and meticulous care in preparing the necessary documents to submit to the U.S. Patent and Trademark Office (“USPTO”). It is necessary to carefully determine which forms to fill out as well as the current status of your patent application. The process begins with identifying whether your application has been examined and whether a declaration has already been filed for the application. If a declaration has not been filed with the patent application, all fees and documents will need to be submitted to the USPTO via fax in lieu of using the electronic file system (EFS).

When a declaration has not already been filed in the application, the first document to be prepared for submission for a correction of inventorship is a Certificate of Transmission under MPEP 37 CFR 1.8. The certificate of transmission accompanies a facsimile transmission to the USPTO and provides a listing of all documents which will accompany a submittal for a correction of inventorship. A certificate of transmission will require a signature of the individual submitting the certificate, their corresponding registration number (if signed by an attorney), and a list of all documents to be submitted. The certificate of transmission is shown below.

The next document to be prepared for submission is a Utility Patent Application Transmittal form. A Utility Patent Application Transmittal form provides an itemized listing of all forms to be submitted during a filing for a pending patent application. Selections for everything from a fee transmittal form to an applicant data sheet are provided on the Utility Patent Application Transmittal form. The attorney docket number, inventor, and title identify the patent application in the upper right section of the transmittal form. A sample form is shown below.

The next step is to provide the appropriate processing fees for addressing a correction of inventorship. The fees and the form will depend on whether the utility patent application has been examined. If the application has yet to be examined (i.e. before a first action or notice of allowance), the fee to be paid is set forth under 37 CFR 1.17(i).

If an office action or notice of allowance has been received for the application, a higher fee set forth in 37 CFR 1.17(d) is required. Payments should be submitted with an appropriate processing fee transmittal form which outlines the payment, payment method, and associated patent application.

Regardless of whether the application has been examined, a formal request for correction of inventorship is required. The request should be titled “Request for Correction of Inventorship Under 37 CFR 1.48(a)”. 37 CRF 1.48(a) indicates a request for correction for non-provisional application. A brief request and explanation for the reasons of the correction should be addressed to the Commissioner for Patents, with a typical “Invitation” and “Conclusion” section wrapping up the request. The front page of the request should also provide the application information such as the pending inventors, application number, confirmation number, filing date, attorney docket number, and mail date.

Additionally, a declaration must also be included in the submission that identifies and is signed by the correct inventor(s). A Declaration for Utility or Design Patent Application form according to 37 CFR 1.63 will provide the appropriate information including the new corrected inventor, patent application number, and attorney information. A sample form is shown below.

A supplemental application data sheet also be required to provide the corrected inventorship information. A typical application data sheet according to 37 CFR 1.76 provides information to identify an application and includes all headings listed in paragraph (b) of this section. A supplemental application data sheet will provide the required corrections to a typical application data sheet and should identify these changes in a marked-up copy using underlining for added text and strike-through for cancelled text. For a correction of inventorship, the appropriate inventor name and contact information will be required.

If filing the submission via facsimile with the USPTO instead of using EFS, a credit card payment form will need to accompany the above mentioned forms. The credit card payment form, shown below, should include all card information, as well as a description of request, which will be a request for correction of inventorship under 37 CFR 1.48 in our case.

Finally, if a declaration has already been filed in the application, a formal signed statement must be included with signatures from every inventor added and every inventor deleted to indicate that the inventorship error was made without deceptive intent on their part. This final declaration(s) will ensure that all parties involved in the process are in agreement with the changes being made to the patent application. More information on the correction of inventorship for a patent application may be found under 37 CFR 1.48.

The above is not legal advice, but is provided for general informational purposes only. Additionally, the above list of documents for submission may be incomplete due to particularities in your patent application or subsequent changes in USPTO rules.

If you have any questions regarding: changing inventorship, 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