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==[[MPEP 605|605 Applicant]]== | ==[[MPEP 605|605 Applicant]]== | ||
<noinclude | <noinclude>__TOC__</noinclude> | ||
37 CFR 1.41. Applicant for patent. | |||
(a)A patent is applied for in the name or names of the actual | (a)A patent is applied for in the name or names of the actual | ||
inventor or inventors. | inventor or inventors. | ||
(1)The inventorship of a nonprovisional application is | |||
that inventorship set forth in the oath or declaration as prescribed | |||
by § 1.63, except as provided for in §§ 1.53(d)(4) and 1.63(d). If | |||
an oath or declaration as prescribed by § 1.63 is not filed during | |||
the pendency of a nonprovisional application, the inventorship is | |||
that inventorship set forth in the application papers filed pursuant | |||
to § 1.53(b), unless applicant files a paper, including the processing | |||
fee set forth in § 1.17(i), supplying or changing the name or | |||
names of the inventor or inventors. | |||
(2)The inventorship of a provisional application is that | |||
inventorship set forth in the cover sheet as prescribed by § | |||
1.51(c)(1). If a cover sheet as prescribed by § 1.51(c)(1) is not | |||
filed during the pendency of a provisional application, the inventorship | |||
is that inventorship set forth in the application papers filed | |||
pursuant to § 1.53(c), unless applicant files a paper including the | |||
processing fee set forth in § | |||
1.17(q), supplying or changing the | |||
name or names of the inventor or inventors. | |||
(3)In a nonprovisional application filed without an oath | |||
or declaration as prescribed by § 1.63 or a provisional application | |||
filed without a cover sheet as prescribed by § 1.51(c)(1), the | |||
name, residence, and citizenship of each person believed to be an | |||
actual inventor should be provided when the application papers | |||
pursuant to § 1.53(b) or § 1.53(c) are filed. | |||
(4)The inventorship of an international application entering | |||
the national stage under 35 | |||
U.S.C. 371 is that inventorship set | |||
forth in the international application, which includes any change | |||
effected under PCT Rule 92bis. See § 1.497(d) and (f) for filing an | |||
oath or declaration naming an inventive entity different from the | |||
inventive entity named in the international application, or if a | |||
change to the inventive entity has been effected under PCT Rule | |||
92bis subsequent to the execution of any declaration filed under | |||
PCT Rule 4.17(iv) (§ 1.48(f)(1) does not apply to an international | |||
application entering the national stage under 35 U.S.C. 371). | |||
(b)Unless the contrary is indicated the word “applicant” | |||
when used in these sections refers to the inventor or joint inventors | |||
who are applying for a patent, or to the person mentioned in | |||
§§ 1.42, 1.43 or 1.47 who is applying for a patent in place of the | |||
inventor. | |||
(c)Any person authorized by the applicant may physically | |||
or electronically deliver an application for patent to the Office on | |||
behalf of the inventor or inventors, but an oath or declaration for | |||
the application (§ | |||
1.63) can only be made in accordance with § | |||
1.64. | |||
(d)A showing may be required from the person filing the | |||
application that the filing was authorized where such authorization | |||
comes into question. | |||
37 CFR 1.45. Joint inventors. | |||
(a)Joint inventors must apply for a patent jointly and each | |||
(a) Joint inventors must apply for a patent jointly and each | |||
must make the required oath or declaration; neither of them alone, | must make the required oath or declaration; neither of them alone, | ||
nor less than the entire number, can apply for a patent for an | nor less than the entire number, can apply for a patent for an | ||
invention invented by them jointly, except as provided in § 1.47. | invention invented by them jointly, except as provided in § 1.47. | ||
(b) Inventors may apply for a patent jointly even though | (b)Inventors may apply for a patent jointly even though | ||
(1)They did not physically work together or at the same | |||
time, | |||
(2)Each inventor did not make the same type or amount | |||
of contribution, or | |||
(3)Each inventor did not make a contribution to the subject | |||
matter of every claim of the application. | |||
(c) If multiple inventors are named in a nonprovisional | (c)If multiple inventors are named in a nonprovisional | ||
application, each named inventor must have made a contribution, | application, each named inventor must have made a contribution, | ||
individually or jointly, to the subject matter of at least one claim | individually or jointly, to the subject matter of at least one claim | ||
Line 50: | Line 104: | ||
35 | 35 | ||
U.S.C. 116. | U.S.C. 116. | ||
37 CFR 1.41 and 37 CFR 1.53 were amended effective | 37 CFR 1.41 and 37 CFR 1.53 were amended effective | ||
Line 110: | Line 162: | ||
If the application is filed by another, see MPEP § | If the application is filed by another, see MPEP § | ||
409.03. | 409.03. | ||
For assignments of application by inventor, see | For assignments of application by inventor, see | ||
MPEP § | MPEP § | ||
301. For an inventor who is dead or insane, | |||
see MPEP § | |||
409. | |||
605.01Applicant’s Citizenship | |||
The statute (35 U.S.C. 115) requires an applicant, | The statute (35 U.S.C. 115) requires an applicant, | ||
Line 126: | Line 187: | ||
does not meet the requirement. | does not meet the requirement. | ||
Form paragraphs 6.05 and 6.05.03 may be used to | |||
notify applicant that the applicant’s citizenship is | |||
omitted. | |||
¶ 6.05 Oath or Declaration Defective, Heading | |||
The oath or declaration is defective. A new oath or declaration | |||
in compliance with 37 CFR 1.67(a) identifying this application | |||
by application number and filing date is required. See MPEP §§ | |||
602.01 and 602.02. | |||
The oath or declaration is defective because: | |||
Examiner Note: | |||
1.One or more of the appropriate form paragraphs 6.05.01 to | |||
6.05.20 must follow this paragraph. | |||
2.If none of the form paragraphs apply, then an appropriate | |||
explanation of the defect should be given immediately following | |||
this paragraph. | |||
¶ 6.05.03 Citizenship Omitted | |||
It does not identify the citizenship of each inventor. | |||
Examiner Note: | |||
This paragraph must be preceded by form paragraph 6.05 | |||
605.02Applicant’s Residence [R-5] | |||
Applicant’s place of residence, that is, the city and | |||
either state or foreign country, is required to be | either state or foreign country, is required to be | ||
included in the oath or declaration in a nonprovisional | included in the oath or declaration in a nonprovisional | ||
Line 152: | Line 243: | ||
6.05.02 should be used. | 6.05.02 should be used. | ||
¶ 6.05.02 Residence Omitted | |||
It does not identify the city and either state or foreign country | |||
of residence of each inventor. The residence information may be | |||
provided on either an application data sheet or a supplemental | |||
oath or declaration. | |||
Examiner Note: | |||
This paragraph must be preceded by form paragraph 6.05. | |||
605.03Applicant’s Mailing or Post | |||
Office Address [R-2] | |||
Each applicant’s mailing or post office address is | Each applicant’s mailing or post office address is | ||
Line 184: | Line 287: | ||
or omitted from the oath or declaration, | or omitted from the oath or declaration, | ||
“Notice of Informal Application” or form paragraph | “Notice of Informal Application” or form paragraph | ||
6.09.01 may be used to notify applicant of the deficiency | 6.09.01 may be used to notify applicant of the deficiency | ||
of the post office address. | of the post office address. | ||
¶ 6.09.01 Post Office Address Omitted, Residence Given | |||
Applicant has not given a post office address anywhere in the | |||
application papers as required by 37 CFR 1.33(a), which was in | |||
effect at the time of filing of the oath or declaration. A statement | |||
over applicant’s signature providing a complete post office | |||
address is required. | |||
Examiner Note: | |||
1.This form paragraph should only be used where the Post | |||
Office address has been omitted in an oath or declaration filed | |||
prior to December 1, 1997. Use form paragraphs 6.05 and 6.05.19if the oath or declaration was filed on or after December 1, 1997. | |||
2.If both the post office address and residence are incomplete, | |||
not uniform or omitted, use form paragraphs 6.05 and 6.05.02. | |||
Oaths or declarations filed on or after December 1, | Oaths or declarations filed on or after December 1, | ||
Line 213: | Line 339: | ||
from the oath or declaration. | from the oath or declaration. | ||
(a) The oath or declaration (§ 1.63), including any supplemental | ¶ 6.05.19 Mailing Address Omitted | ||
It does not identify the mailing address of each inventor. A | |||
mailing address is an address at which an inventor customarily | |||
receives his or her mail and may be either a home or business | |||
address. The mailing address should include the ZIP Code designation. | |||
The mailing address may be provided in an application | |||
data sheet or a supplemental oath or declaration. See 37 CFR | |||
1.63(c) and 37 CFR 1.76. | |||
Examiner Note: | |||
This paragraph must be preceded by form paragraph 6.05. | |||
605.04(a)Applicant’s Signature and | |||
Name [R-5] | |||
37 CFR 1.64. Person making oath or declaration. | |||
(a)The oath or declaration (§ 1.63), including any supplemental | |||
oath or declaration (§ 1.67), must be made by all of the | oath or declaration (§ 1.67), must be made by all of the | ||
actual inventors except as provided for in §§ 1.42, 1.43, 1.47, or § | actual inventors except as provided for in §§ 1.42, 1.43, 1.47, or § | ||
1.67. | 1.67. | ||
(b) If the person making the oath or declaration or any supplemental | (b)If the person making the oath or declaration or any supplemental | ||
oath or declaration is not the inventor (§§ 1.42, 1.43, | oath or declaration is not the inventor (§§ 1.42, 1.43, | ||
1.47, or § 1.67), the oath or declaration shall state the relationship | 1.47, or § 1.67), the oath or declaration shall state the relationship | ||
Line 230: | Line 376: | ||
legal representative and the citizenship, residence, and mailing | legal representative and the citizenship, residence, and mailing | ||
address of the legal representative. | address of the legal representative. | ||
I.EXECUTION OF OATHS OR DECLARATIONS | |||
OF PATENT APPLICATIONS | |||
United States patent applications which have not | United States patent applications which have not | ||
Line 245: | Line 391: | ||
result in a loss of rights, it is appropriate to | result in a loss of rights, it is appropriate to | ||
emphasize the importance of proper execution and filing. | emphasize the importance of proper execution and filing. | ||
There is no requirement that a signature be made in | There is no requirement that a signature be made in | ||
Line 266: | Line 413: | ||
of execution. Physical connection is not required. | of execution. Physical connection is not required. | ||
Copies of declarations are encouraged. See MPEP § 502.01, § 502.02, § 602, and § 602.05(a). | |||
Copies of declarations are encouraged. See MPEP | |||
§ | |||
502.01, § 502.02, § 602, and § 602.05(a). | |||
An oath or declaration under 37 CFR 1.63 by each | An oath or declaration under 37 CFR 1.63 by each | ||
Line 285: | Line 440: | ||
requirements for an international application before | requirements for an international application before | ||
the Patent and Trademark Office are set forth in | the Patent and Trademark Office are set forth in | ||
35 U.S.C. 371(c)(4) and 37 CFR 1.497. | 35 | ||
U.S.C. 371(c)(4) and 37 CFR 1.497. | |||
37 CFR 1.52(c)(1) states that “[a]ny interlineation, | 37 CFR 1.52(c)(1) states that “[a]ny interlineation, | ||
Line 338: | Line 494: | ||
6.02.01 may be used to call noninitialed and/or nondated | 6.02.01 may be used to call noninitialed and/or nondated | ||
alterations to applicant’s attention. | alterations to applicant’s attention. | ||
¶ 6.05.02 Residence Omitted | |||
It does not identify the city and either state or foreign country | |||
of residence of each inventor. The residence information may be | |||
provided on either an application data sheet or a supplemental | |||
oath or declaration. | |||
Examiner Note: | |||
This paragraph must be preceded by form paragraph 6.05. | |||
The signing and execution by the applicant of oaths | The signing and execution by the applicant of oaths | ||
or declarations in certain continuation or divisional | or declarations in certain continuation or divisional | ||
applications may be omitted. See MPEP § 201.06, | applications may be omitted. See MPEP § 201.06, | ||
§ 201.07, and § 602.05(a). | § | ||
201.07, and § | |||
602.05(a). | |||
For the signature on a reply, see MPEP § 714.01(a) | For the signature on a reply, see MPEP § 714.01(a) | ||
to § 714.01(d). | to § | ||
714.01(d). | |||
II.EXECUTION OF OATH OR DECLARATION | |||
ON BEHALF OF INVENTOR | |||
The oath or declaration required by 35 U.S.C. 115 | The oath or declaration required by 35 U.S.C. 115 | ||
Line 363: | Line 537: | ||
executes an oath or declaration on behalf of a | executes an oath or declaration on behalf of a | ||
deceased inventor, the legal representative must state | deceased inventor, the legal representative must state | ||
that the person is a legal representative and provide | that the person is a legal representative and provide | ||
the citizenship, residence, and mailing address of the | the citizenship, residence, and mailing address of the | ||
Line 385: | Line 565: | ||
interest in the invention.). | interest in the invention.). | ||
605.04(b)One Full Given Name Required[R-3] | |||
37 CFR 1.63(a)(2) requires that each inventor be | 37 CFR 1.63(a)(2) requires that each inventor be | ||
Line 394: | Line 574: | ||
name is “John Paul Doe,” either “John P. Doe” or “J. | name is “John Paul Doe,” either “John P. Doe” or “J. | ||
Paul Doe” is acceptable. | Paul Doe” is acceptable. | ||
Form paragraphs 6.05 (reproduced in MPEP § | |||
602.03) and 6.05.18 may be used to notify applicant | |||
that the oath or declaration is defective because the | |||
full given name of each inventor has not been adequately | |||
stated. | |||
¶ 6.05.18 Full Given Name Is Not Set Forth | |||
The full name of each inventor (family name and at least one | |||
given name together with any initial) has not been set forth. | |||
Examiner Note: | |||
This paragraph must be preceded by paragraph 6.05. | |||
A situation may arise where an inventor’s full given | A situation may arise where an inventor’s full given | ||
Line 429: | Line 624: | ||
in the name of the inventor(s) will not be | in the name of the inventor(s) will not be | ||
entertained, unless accompanied by a petition under | entertained, unless accompanied by a petition under | ||
37 CFR 1.182 together with an appropriate petition | 37 | ||
CFR 1.182 together with an appropriate petition | |||
fee. Since amendments are not permitted after the | fee. Since amendments are not permitted after the | ||
payment of the issue fee (37 CFR 1.312), a petition | payment of the issue fee (37 CFR 1.312), a petition | ||
Line 453: | Line 649: | ||
When a typographical or transliteration error in the | When a typographical or transliteration error in the | ||
spelling of an inventor’s name is discovered during | spelling of an inventor’s name is discovered during | ||
pendency of an application, a petition is not required, | pendency of an application, a petition is not required, | ||
nor is a new oath or declaration under 37 CFR 1.63needed. However, applicants are strongly encouraged | nor is a new oath or declaration under 37 CFR 1.63needed. However, applicants are strongly encouraged | ||
Line 485: | Line 687: | ||
added to the IFW. | added to the IFW. | ||
605.04(c)Inventor Changes Name [R-5] | |||
In cases where an inventor’s name has been | In cases where an inventor’s name has been | ||
Line 529: | Line 731: | ||
change in the assignment record. | change in the assignment record. | ||
605.04(d)Applicant Unable to Write | |||
If the applicant is unable to write, his or her mark as | If the applicant is unable to write, his or her mark as | ||
Line 537: | Line 739: | ||
mark. | mark. | ||
605.04(e)May Use Title With Signature | |||
It is permissible for an applicant to use a title of | It is permissible for an applicant to use a title of | ||
Line 544: | Line 746: | ||
the printed patent. | the printed patent. | ||
605.04(f)Signature on Joint Applications | |||
- Order of Names [R-3] | |||
The order of names of joint patentees in the heading | The order of names of joint patentees in the heading | ||
Line 554: | Line 757: | ||
shifting of the names would entail changing | shifting of the names would entail changing | ||
numerous records in the Office. Since the particular | numerous records in the Office. Since the particular | ||
order in which the names appear is of no consequence | order in which the names appear is of no consequence | ||
insofar as the legal rights of the joint applicants are | insofar as the legal rights of the joint applicants are | ||
Line 590: | Line 799: | ||
different order is requested at the time of filing. | different order is requested at the time of filing. | ||
605.04(g)Correction of Inventorship[R-2] | |||
When the request is granted to add or delete | When the request is granted to add or delete | ||
Line 596: | Line 805: | ||
noted in red ink in the left margin of the original oath | noted in red ink in the left margin of the original oath | ||
or declaration , if the application is maintained in | or declaration , if the application is maintained in | ||
paper. The notation should read | paper. The notation should read “See Paper No. | ||
____ for inventorship changes. | ____ for inventorship changes.” For Image File | ||
Wrapper (IFW) processing, see IFW Manual. The | Wrapper (IFW) processing, see IFW Manual. The | ||
application (other than 09/ or later series applications) | application (other than 09/ or later series applications) | ||
Line 603: | Line 812: | ||
Examination (OIPE) for correction on the file wrapper | Examination (OIPE) for correction on the file wrapper | ||
label and the PALM database regarding the inventorship. | label and the PALM database regarding the inventorship. | ||
A brief explanation on an | A brief explanation on an “Application Division | ||
Data Base Routing | Data Base Routing Slip” (available from the Technology | ||
Center (TC) technical support staff) should | Center (TC) technical support staff) should | ||
accompany the application file to OIPE. For 09/ or | accompany the application file to OIPE. For 09/ or | ||
Line 615: | Line 824: | ||
Office of Petitions. | Office of Petitions. | ||
605.05Administrator, Executor, or | |||
Other Legal Representative | |||
In an application filed by a legal representative of | In an application filed by a legal representative of | ||
Line 625: | Line 835: | ||
For prosecution by heirs, see MPEP § 409.01(a) | For prosecution by heirs, see MPEP § 409.01(a) | ||
and § 409.01(d). | and § | ||
409.01(d). | |||
For prosecution by representative of legally incapacitated | For prosecution by representative of legally incapacitated | ||
Line 631: | Line 843: | ||
For prosecution by other than inventor, see MPEP | For prosecution by other than inventor, see MPEP | ||
§ 409.03. | § | ||
409.03. | |||
605.07Joint Inventors | |||
35 U.S.C. 116. Inventors | 35 U.S.C. 116. Inventors | ||
Line 643: | Line 857: | ||
work together or at the same time, (2) each did not make the same | work together or at the same time, (2) each did not make the same | ||
type or amount of contribution, or (3) each did not make a contribution | type or amount of contribution, or (3) each did not make a contribution | ||
to the subject matter of every claim of the patent. | to the subject matter of every claim of the patent. | ||
35 U.S.C. 116, as amended by Public Law 98-622, | 35 U.S.C. 116, as amended by Public Law 98-622, | ||
Line 659: | Line 875: | ||
(B)each did not make the same type or amount of | (B)each did not make the same type or amount of | ||
contribution, or | contribution, or | ||
(C)each did not make a contribution to the subject | (C)each did not make a contribution to the subject | ||
Line 683: | Line 904: | ||
Like other patent applications, jointly filed applications | Like other patent applications, jointly filed applications | ||
are subject to the requirements of 35 U.S.C. | are subject to the requirements of 35 U.S.C. 121that an application be directed to only a single invention. | ||
If more than one invention is included in the | If more than one invention is included in the | ||
application, the examiner may require the application | application, the examiner may require the application | ||
to be restricted to one of the inventions. In such a | to be restricted to one of the inventions. In such a | ||
case, a | case, a “divisional” application complying with 35 | ||
U.S.C. 120 would be entitled to the benefit of the earlier | U.S.C. 120 would be entitled to the benefit of the earlier | ||
filing date of the original application. | filing date of the original application. | ||
Line 703: | Line 924: | ||
37 CFR 1.45. Joint inventors. | 37 CFR 1.45. Joint inventors. | ||
(b)Inventors may apply for a patent jointly even though | (b)Inventors may apply for a patent jointly even though | ||
Line 724: | Line 947: | ||
matter disclosed in the provisional application and the provisional | matter disclosed in the provisional application and the provisional | ||
application will be considered to be a joint application under | application will be considered to be a joint application under | ||
35 U.S.C. 116. | 35 | ||
U.S.C. 116. | |||
Since provisional applications may be filed without | Since provisional applications may be filed without | ||
Line 737: | Line 961: | ||
(A)The joint inventors do not have to separately | (A)The joint inventors do not have to separately | ||
“sign the application,” but only need apply for the | |||
patent jointly and make the required oath or declaration | patent jointly and make the required oath or declaration | ||
by signing the same; this is a clarification, but not | by signing the same; this is a clarification, but not | ||
Line 743: | Line 967: | ||
(B)Inventors may apply for a patent jointly even | (B)Inventors may apply for a patent jointly even | ||
though | though “they did not work together or at the same | ||
time, | time,” thereby clarifying (a) that it is not necessary | ||
that the inventors physically work together on a | that the inventors physically work together on a | ||
project, and (b) that one inventor may | project, and (b) that one inventor may “take a step at | ||
one time, the other an approach at different times. | one time, the other an approach at different times.” | ||
(Monsanto Co. v. Kamp, 269 F. Supp. 818, 824, 154 | |||
USPQ 259, 262 (D.D.C. 1967)). | |||
(C)Inventors may apply for a patent jointly even | (C)Inventors may apply for a patent jointly even | ||
though | though “each did not make the same type or amount | ||
of contribution, | of contribution,” thereby clarifying the “fact that each | ||
of the inventors play a different role and that the contribution | of the inventors play a different role and that the contribution | ||
of one may not be as great as that of another | of one may not be as great as that of another | ||
does not detract from the fact that the invention is | does not detract from the fact that the invention is | ||
joint, if each makes some original contribution, | joint, if each makes some original contribution, | ||
though partial, to the final solution of the problem. | though partial, to the final solution of the problem.” | ||
Monsanto Co. v. Kamp, 269 F. Supp. at 824, 154 | |||
USPQ at 262. | |||
(D)Inventors may apply for a patent jointly even | (D)Inventors may apply for a patent jointly even | ||
though | though “each did not make a contribution to the subject | ||
matter of every claim of the patent. | matter of every claim of the patent.” | ||
(E)Inventors may apply for a patent jointly as | (E)Inventors may apply for a patent jointly as | ||
Line 771: | Line 999: | ||
(F)If an application by joint inventors includes | (F)If an application by joint inventors includes | ||
more than one independent and distinct invention, | more than one independent and distinct invention, | ||
restriction may be required with the possible result of | restriction may be required with the possible result of | ||
a necessity to change the inventorship named in the | a necessity to change the inventorship named in the | ||
Line 828: | Line 1,062: | ||
claims to the invention of one or more inventors are | claims to the invention of one or more inventors are | ||
canceled. | canceled. | ||
The examiner should not inquire of the patent | |||
applicant concerning the inventors and the invention | |||
dates for the subject matter of the various claims until | |||
it becomes necessary to do so in order to properly | |||
examine the application. | |||
If an application is filed with joint inventors, the | If an application is filed with joint inventors, the | ||
Line 866: | Line 1,106: | ||
Kohle m.b.H. v. Shell Oil Co., 112 F.3d | Kohle m.b.H. v. Shell Oil Co., 112 F.3d | ||
1561, 42 USPQ2d 1674 (Fed. Cir. 1997). For example: | 1561, 42 USPQ2d 1674 (Fed. Cir. 1997). For example: | ||
If foreign applicant A invents X and files a foreign application; | If foreign applicant A invents X and files a foreign application; |