Editing MPEP 605

<noinclude>{{MPEP Section|604|600|606}}</noinclude>

==[[MPEP 605|605 Applicant]]==

<noinclude><div class="noautonum">__TOC__</div></noinclude>

{{Statute|37 CFR 1.41. Applicant for patent.}}
(a)A patent is applied for in the name or names of the actual 
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.
|}


{{Statute|37 CFR 1.45. Joint inventors.}}
(a) Joint inventors must apply for a patent jointly and each 
must make the required oath or declaration; neither of them alone, 
nor less than the entire number, can apply for a patent for an 
invention invented by them jointly, except as provided in § 1.47.

(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 
application, each named inventor must have made a contribution, 
individually or jointly, to the subject matter of at least one claim 
of the application and the application will be considered to be a 
joint application under 35 U.S.C. 116. If multiple inventors are 
named in a provisional application, each named inventor must 
have made a contribution, individually or jointly, to the subject 
matter disclosed in the provisional application and the provisional 
application will be considered to be a joint application under 
35 
U.S.C. 116.
|}


37 CFR 1.41 and 37 CFR 1.53 were amended effective 
December 1, 1997, to remove the requirement 
that the name(s) of the inventor(s) be identified in the 
application papers in order to accord the application a 
filing date. 37 CFR 1.41(a)(1) now defines the inventorship 
of a nonprovisional application as that inventorship 
set forth in the oath or declaration filed to 
comply with the requirements of 37 CFR 1.63, except 
as provided for in 37 CFR 1.53(d)(4) and 37 CFR 
1.63(d). The oath or declaration may be filed on the 
filing date of the application or on a later date. If an 
oath or declaration is not filed during the pendency of 
a nonprovisional application, the inventorship is that 
inventorship set forth in the application papers filed 
pursuant to 37 CFR 1.53(b), unless an applicant files a 
paper under 37 CFR 1.41(a)(1) accompanied by 
the processing fee set forth in 37 CFR 1.17(i) supplying 
or changing the name or names of the inventor or 
inventors.

The name, residence, and citizenship of each person 
believed to be an actual inventor should be provided 
as an application identifier when application 
papers under 37 CFR 1.53(b) are filed without an oath 
or declaration, or application papers under 37 CFR 
1.53(c) are filed without a cover sheet. See 37 CFR 
1.41(a)(3). Naming the individuals known to be 
inventors or the persons believed to be the inventors 
may enable the Office to identify the application, if 
applicant does not know the application number. 
Where no inventor(s) is known and applicant cannot 
name a person believed to be an inventor on filing, the 
Office requests that an alphanumeric identifier be submitted 
for the application. The use of very short identifiers 
should be avoided to prevent confusion. 
Without supplying at least a unique identifying name 
the Office may have no ability or only a delayed ability 
to match any papers submitted after filing of the 
application and before issuance of an identifying 
application number with the application file. Any 
identifier used that is not an inventor’s name should 
be specific, alphanumeric characters of reasonable 
length, and should be presented in such a manner that 
it is clear to application processing personnel what the 
identifier is and where it is to be found. Failure to 
apprise the Office of an application identifier such as 
the names of the inventors or the alphanumeric identifier 
being used may result in applicants having to 
resubmit papers that could not be matched with the 
application and proof of the earlier receipt of such 
papers where submission was time dependent.

For correction of inventorship, see MPEP § 201.03.

This section concerns filing by the actual inventor. 
If the application is filed by another, see MPEP § 
409.03.

For assignments of application by inventor, see 
MPEP § 301. For an inventor who is dead or insane, 
see MPEP § 409.

===605.01 Applicant's Citizenship===

The statute (35 U.S.C. 115) requires an applicant, 
in a nonprovisional application, to state his or her citizenship. 
Where an applicant is not a citizen of any 
country, a statement to this effect is accepted as satisfying 
the statutory requirement, but a statement as to 
citizenship applied for or first papers taken out looking 
to future citizenship in this (or any other) country 
does not meet the requirement.

===605.02 Applicant’s Residence===

Applicant's place of residence, that is, the city and 
either state or foreign country, is required to be 
included in the oath or declaration in a nonprovisional 
application for compliance with 37 CFR 1.63 unless it 
is included in an application data sheet (37 CFR 1.76). 
In the case of an applicant who is in one of the U.S. 
Armed Services, a statement to that effect is sufficient 
as to residence. For change of residence, see MPEP § 
719.02(b). Applicant’s residence must be included on 
the cover sheet for a provisional application unless it 
is included in an application data sheet (37 CFR 1.76).

If the residence is not included in the executed oath 
or declaration filed under 37 CFR 1.63, the Office of 
Initial Patent Examination (OIPE) will normally so 
indicate on a  “Notice of 
Informal Application,” so 
as to require the submission of the residence information 
within a set period for reply. If the examiner notes 
that the residence has not been included in the oath or 
declaration or in an application data sheet, form paragraphs 
6.05 (reproduced in MPEP § 605.01) and 
6.05.02 should be used.

===605.03 Applicant’s Mailing or Post Office Address===

Each applicant’s mailing or post office address is 
required to be supplied on the oath or declaration, if 
not stated in an application data sheet. Applicant’s 
mailing address means that address at which he or she 
customarily receives his or her mail. Either applicant’s 
home or business address is acceptable as the 
mailing address. The mailing address should include 
the ZIP Code designation. Since the term “post office 
address” as previously used in 37 CFR 1.63 may be 
confusing, effective November 7, 2000, 37 CFR 1.63was amended to use the term “mailing address” 
instead.

The object of requiring each applicant’s mailing 
address is to enable the Office to communicate 
directly with the applicant if desired; hence, the 
address of the attorney with instruction to send communications 
to applicant in care of the attorney is not 
sufficient.

In situations where an inventor does not execute the 
oath or declaration and the inventor is not deceased, 
such as in an application filed under 37 CFR 1.47, the 
inventor’s most recent home address must be given to 
enable the Office to communicate directly with the 
inventor as necessary.

If an oath or declaration was filed prior to December 
1, 1997 and the post office address was incomplete 
or omitted from the oath or declaration, 
“Notice of Informal Application” or form paragraph 
6.09.01 may be used to notify applicant of the deficiency 
of the post office address.

Oaths or declarations filed on or after December 1, 
1997 must include the mailing or post office address 
of each inventor. Effective November 7, 2000 the 
mailing address of each inventor may be provided in 
an application data sheet. See 37 CFR 1.63(c) and 37 
CFR 1.76. In an application filed before November 
29, 2000, the Office of Initial Patent Examination 
(OIPE) will normally indicate the omission of an 
inventor’s mailing address on a “Notice of Informal 
Application,” requiring a new oath or declaration 
when the form is sent out with an Office action. For 
utility and plant applications filed on or after November 
29, 2000, applicant’s mailing address may be 
needed for any patent application publication. If the 
mailing address of any inventor has been omitted, 
OIPE will notify applicant of the omission and require 
the omitted mailing address in response to the notice. 
If the examiner notes that the mailing or post office 
address has not been included in an oath or declaration 
filed on or after December 1, 1997,  and the 
mailing address is not provided in an application data 
sheet, form paragraphs 6.05 (reproduced in MPEP § 
605.01) and 6.05.19 may be used to notify applicant 
that the mailing or post office address has been omitted 
from the oath or declaration.

====605.04(a) Applicant’s Signature and Name====

{{Statute|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 
actual inventors except as provided for in §§ 1.42, 1.43, 1.47, or § 
1.67.

(b) If the person making the oath or declaration or any supplemental 
oath or declaration is not the inventor (§§ 1.42, 1.43, 
1.47, or § 1.67), the oath or declaration shall state the relationship 
of the person to the inventor, and, upon information and belief, the 
facts which the inventor is required to state. If the person signing 
the oath or declaration is the legal representative of a deceased 
inventor, the oath or declaration shall also state that the person is a 
legal representative and the citizenship, residence, and mailing 
address of the legal representative.
|}

======I.EXECUTION OF OATHS OR DECLARATIONS OF PATENT APPLICATIONS======

United States patent applications which have not 
been prepared and executed in accordance with the 
requirements of Title 35 of the United States Code 
and Title 37 of the Code of Federal Regulations may 
be abandoned. Although the statute and the rules have 
been in existence for many years, the Office continues 
to receive a number of applications which have been 
improperly executed and/or filed. Since the improper 
execution and/or filing of patent applications can ultimately 
result in a loss of rights, it is appropriate to 
emphasize the importance of proper execution and filing.

There is no requirement that a signature be made in 
any particular manner. See MPEP § 605.04(d). If 
applicant signs his or her name using non-English 
characters, then such a signature will be accepted.

Applications filed through the Electronic Filing 
System must also contain an oath or declaration personally 
signed by the inventor. 

It is improper for an applicant to sign an oath or 
declaration which is not attached to or does not identify 
a specification and/or claims.

Attached does not necessarily mean that all the 
papers must be literally fastened. It is sufficient that 
the specification, including the claims, and the oath or 
declaration are 
physically located together at the time 
of execution. Physical connection is not required. 

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 
actual inventor must be presented. While each inventor 
need not execute the same oath or declaration, 
each oath or declaration executed by an inventor must 
contain a complete listing of all inventors so as to 
clearly indicate what each inventor believes to be the 
appropriate inventive entity.

The provisions of 35 U.S.C. 363 for filing an international 
application under the Patent Cooperation 
Treaty (PCT) which designates the United States and 
thereby has the effect of a regularly filed United 
States national application, except as provided in 35 
U.S.C. 102(e), are somewhat different than the provisions 
of 35 U.S.C. 111. The oath or declaration 
requirements for an international application before 
the Patent and Trademark Office are set forth in 
35 U.S.C. 371(c)(4) and 37 CFR 1.497.

37 CFR 1.52(c)(1) states that “[a]ny interlineation, 
erasure, cancellation or other alteration of the application 
papers filed must be made before the signing of 
any accompanying oath or declaration pursuant to § 
1.63 referring to those application papers and should 
be dated and initialed or signed by the applicant on 
the same sheet of paper. Application papers containing 
alterations made after the signing of an oath or 
declaration referring to those application papers must 
be supported by a supplemental oath or declaration 
under § 1.67. In either situation, a substitute specification 
(§ 1.125) is required if the application papers do 
not comply with paragraphs (a) and (b) of this section.” 
37 CFR 1.52(c)(2) states that after the signing 
of the oath or declaration referring to the application 
papers, amendments may only be made in the manner 
provided by 37 CFR 1.121. An application submitted 
through the electronic filing system (EFS) may 
include scanned images of a declaration executed by 
the inventor. The reformatting of an application in 
submitting the specification of the application using 
EFS, is not an “alteration of the application papers” 
requiring a substitute oath or declaration. It is acceptable 
to print out a copy of the specification prepared 
using traditional word processing software for the 
inventor to review as he or she signs the oath or declaration, 
and then cut and paste from the electronic document 
to prepare the EFS version of the specification 
and to submit a scanned copy of the declaration with 
the EFS submission.

In summary, it is emphasized that the application 
filed must be the application executed by the applicant 
and it is improper for anyone, including counsel, 
to alter, rewrite, or partly fill in any part of the application, 
including the oath or declaration, after execution 
of the oath or declaration by the applicant. This 
provision should particularly be brought to the attention 
of foreign applicants by their United States counsel 
since the United States law and practice in this 
area may differ from that in other countries.

Any changes made in ink in the application or oath 
prior to signing should be initialed and dated by the 
applicants prior to execution of the oath or declaration. 
The Office will not consider whether noninitialed 
and/or nondated alterations were made before 
or after signing of the oath or declaration but will 
require a new oath or declaration. Form paragraph 
6.02.01 may be used to call noninitialed and/or nondated 
alterations to applicant’s attention.

The signing and execution by the applicant of oaths 
or declarations in certain continuation or divisional 
applications may be omitted. See MPEP § 201.06, 
§ 201.07, and § 602.05(a).

For the signature on a reply, see MPEP § 714.01(a)
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 
must be signed by all of the actual inventors, except 
under limited circumstances. 35 

U.S.C. 116 provides 
that joint inventors can sign on behalf of an inventor 
who cannot be 
reached or refuses to join. See MPEP § 
409.03(a). 35  
U.S.C. 117 provides that the legal representative 
of a deceased or incapacitated inventor can 
sign on behalf of the inventor. If a legal representative 
executes an oath or declaration on behalf of a 
deceased inventor, the legal representative must state 
that the person is a legal representative and provide 
the citizenship, residence, and mailing address of the 
legal representative. See 37 CFR 1.64, MPEP §..
409.01 and § 409.02. 35  
U.S.C. 118 provides that a 
party with proprietary interest in the invention 
claimed in an application can sign on behalf of the 
inventor, if the inventor cannot be reached or refuses 
to join in the filing of the application. See MPEP § 
409.03(b) and § 409.03(f). The oath or declaration 
may not be signed by an attorney on behalf of the 
inventor, even if the attorney has been given a power 
of attorney to do so. Opinion of Hon. Edward Bates,
10 Op. Atty. Gen. 137 (1861). See also Staeger v. 
Commissioner of Patents and Trademarks, 189 
USPQ 
272 (D.D.C. 1976) and In re Striker, 182 USPQ 507 
(PTO Solicitor 1973) (In each case, an oath or declaration 
signed by the attorney on behalf of the inventor 
was defective because the attorney did not have a proprietary 
interest in the invention.). 

====605.04(b) One Full Given Name Required====

37 CFR 1.63(a)(2) requires that each inventor be 
identified by full name, including the family name, 
and at least one given name without abbreviation 
together with any other given name or initial in the 
oath or declaration. For example, if the applicant's full 
name is “John Paul Doe,” either “John P. Doe” or “J. 
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.

A situation may arise where an inventor’s full given 
name is a singular letter, or is a plurality of singular 
letters. For example, an inventor’s full given name 
may be “J. Doe” or “J.P. Doe,” i.e., the “J” and the “P” 
are not initials. In such a situation, identifying the 
inventor by his or her family name and the singular 
letter(s) is acceptable, since that is the inventor’s full 
given name. In order to avoid an objection under 37 
CFR1.63(a)(2), applicant should point out in the oath 
or declaration that the singular lettering set forth is the 
inventor’s given name. A statement to this effect, 
accompanying the filing of the oath or declaration, 
will also be acceptable. Without such a statement, the 
examiner should treat the singular letter(s) as an 
abbreviation of the inventor’s given name and should 
object to the oath or declaration using the appropriate 
form paragraphs. Applicant may overcome this objection 
by filing a responsive statement that the singular 
letter(s) is/are the inventor’s given name(s).

In an application where the name is typewritten 
with a middle name or initial, but the signature does 
not contain such middle name or initial, the typewritten 
version of the name will be used as the inventor’s 
name for the purposes of the application and any 
patent that may issue from the application. No objection 
should be made in this instance, since the inventor’s 
signature may differ from his or her legal name. 
Except for correction of a typographical or transliteration 
error in the spelling of an inventor’s name, a 
request to have the name changed from the typewritten 
version to the signed version or any other corrections 
in the name of the inventor(s) will not be 
entertained, unless accompanied by a petition under 
37 CFR 1.182 together with an appropriate petition 
fee. Since amendments are not permitted after the 
payment of the issue fee (37 CFR 1.312), a petition 
under 37 CFR 1.182 to change the name of the inventor 
cannot be granted if filed after the payment of the 
issue fee. The petition should be directed to the 
attention of the Office of Petitions. Upon granting of 
the petition, if the application is maintained in paper, 
the left margin of the original oath or declaration 
should be marked in red ink “See paper No. ___ for 
correction of the inventor’s name,” and the application 
should be sent to the Office of Initial Patent 
Examination (OIPE) for correction of its records, 
unless the application is an application with an application 
data sheet (e.g., an 09/ series application), in 
which case the Office of Petitions will correct the 
Office computer records and print a new bibliographic 
data sheet. If the application is assigned, it will be 
forwarded by OIPE or the Office of Petitions to the 
Assignment Division for a change in the assignment 
record.

When a typographical or transliteration error in the 
spelling of an inventor’s name is discovered during 
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 
to use an application data sheet such that any patent to 
issue will reflect the correct spelling of the inventor’s 
name. Without an application data sheet with the corrected 
spelling, any patent to issue is less likely to 
reflect the correct spelling since the spelling of the 
inventor’s name is taken from the oath or declaration, 
or any subsequently filed application data sheet.

If the error is not detected until after the payment 
of the issue fee, because amendments are not permitted 
after the payment of the issue fee, either (A) the 
application must be withdrawn from issue under 37 
CFR 1.313(c)(2) and a request to correct the spelling 
of the inventor’s name submitted with a request for 
continued examination (RCE) under 37 CFR 1.114, or 
(B) a certificate of correction must be filed after the 
patent issues requesting correction of the spelling of 
the inventor’s name.

When any correction or change is effected, the 
Office computer records must be changed. If the 
application is maintained in paper, the change should 
be noted on the original oath or declaration by writing 
in red ink in the left column “See Paper No. __ for 
inventorship changes.” See MPEP §§ 201.03 and 
605.04(g). If the application is an Image File Wrapper 
(IFW) application, after the Office records are corrected, 
a new bib-data sheet must be printed and 
added to the IFW.

====605.04(c) Inventor Changes Name====

In cases where an inventor’s name has been 
changed after the application has been filed and the 
inventor desires to change his or her name on the 
application, he or she must submit a petition under 37 
CFR 1.182. Applicants are also strongly encouraged 
to submit an application data sheet (37 CFR 1.76) 
showing the new name. The petition should be 
directed to the attention of the Office of Petitions. The 
petition must include an appropriate petition fee and 
a statement signed by the inventor setting forth 
both names and the procedure whereby the change of 
name was effected, or a  copy of the court order.

Since amendments are not permitted after the payment 
of the issue fee (37 CFR 1.312), a petition under 
37 CFR 1.182 to change the name of the inventor cannot 
be granted if filed after the payment of the issue 
fee.

If an application data sheet is not submitted, the 
petition may still be granted, but the patent may not 
reflect the correct spelling of the inventor’s name.

If the petition is granted, if the application is maintained 
in paper with a file jacket label (i.e., the application 
is an 08/ or earlier series application), the 
original declaration must be marked in red ink, in the 
left margin “See paper No. _ for correction of inventor 
name” and the application should be sent to the 
Office of Initial Patent Examination (OIPE) for 
change of name on the file wrapper and in the PALM 
database. If the petition is granted in an Image File 
Wrapper (IFW) application or if the application is an 
09/ or later series application, the spelling of the 
inventor’s name should be changed in the Office computer 
records and a new PALM bib-data sheet should 
be printed. If the application is assigned, applicant 
should submit a corrected assignment document along 
with a cover sheet and the recording fee as set forth in 
37 CFR 1.21(h) to the Assignment Division for a 
change in the assignment record.

====605.04(d) Applicant Unable to Write====

If the applicant is unable to write, his or her mark as 
affixed to the oath or declaration must be attested to 
by a witness. In the case of the oath, the notary’s signature 
to the jurat is sufficient to authenticate the 
mark.

====605.04(e) May Use Title With Signature====

It is permissible for an applicant to use a title of 
nobility or other title, such as “Dr.”, in connection 
with his or her signature. The title will not appear in 
the printed patent.

====605.04(f) Signature on Joint Applications - Order of Names====

The order of names of joint patentees in the heading 
of the patent is taken from the order in which the typewritten 
names appear in the original oath or declaration. 
Care should therefore be exercised in selecting 
the preferred order of the typewritten names of the 
joint inventors, before filing, as requests for subsequent 
shifting of the names would entail changing 
numerous records in the Office. Since the particular 
order in which the names appear is of no consequence 
insofar as the legal rights of the joint applicants are 
concerned, no changes will be made except when a 
petition under 37 CFR 1.182 is granted. The petition 
should be directed to the attention of the Office of 
Petitions. The petition to change the order of names 
must be signed by either the attorney or agent of 
record or all the applicants. Applicants are strongly 
encouraged to submit an application data sheet showing 
the new order of inventor names to ensure appropriate 
printing of the inventor names in any patent to 
issue. It is suggested that all typewritten and signed 
names appearing in the application papers should be 
in the same order as the typewritten names in the oath 
or declaration. When the Office of Petitions grants a 
petition to change the order of the names of the inventors, 
the Office of Petitions will change the order of 
the names in the Office computer records and print a 
new bib-data sheet, unless the application is an 08/ or 
earlier series application, in which case, the application 
should be sent to the Office of Initial Patent 
Examination (OIPE) for correction on the file wrapper 
label and the PALM database. Since a change to the 
order of the inventor’s names is an amendment to the 
application and amendments are not permitted after 
the payment of the issue fee (37 CFR 1.312), a petition 
under 37 CFR 1.182 to change the order of the 
inventor’s name cannot be granted if filed after the 
payment of the issue fee.

In those instances where the joint applicants file 
separate oaths or declarations, the order of names is 
taken from the order in which the several oaths or 
declarations appear in the application papers unless a 
different order is requested at the time of filing.

====605.04(g) Correction of Inventorship====

When the request is granted to add or delete 
inventors under 37 CFR 1.48, the change should be 
noted in red ink in the left margin of the original oath 
or declaration , if the application is maintained in 
paper. The notation should read "See Paper No. 
____ for inventorship changes." For Image File 
Wrapper (IFW) processing, see IFW Manual. The 
application (other than 09/ or later series applications) 
should be sent to the Office of Initial Patent 
Examination (OIPE) for correction on the file wrapper 
label and the PALM database regarding the inventorship. 
A brief explanation on an "Application Division 
Data Base Routing Slip" (available from the Technology 
Center (TC) technical support staff) should 
accompany the application file to OIPE. For 09/ or 
later series applications, the examiner should have 
the TC’s technical support staff enter the correction in 
the PALM database and print a new PALM bib-data 
sheet, which will then be placed in the file wrapper , 
if correction of the database and printing of a new 
PALM bib-data sheet was not already done by the 
Office of Petitions.

===605.05 Administrator, Executor, or Other Legal Representative===

In an application filed by a legal representative of 
the inventor, the specification should not be written in 
the first person.

For prosecution by administrator or executor, see 
MPEP § 409.01(a).

For prosecution by heirs, see MPEP § 409.01(a)
and § 409.01(d).

For prosecution by representative of legally incapacitated 
inventor, see MPEP § 409.02.

For prosecution by other than inventor, see MPEP 
§ 409.03.

===605.07 Joint Inventors===

35 U.S.C. 116. Inventors

When an invention is made by two or more persons jointly, 
they shall apply for patent jointly and each make the required 
oath, except as otherwise provided in this title. Inventors may 
apply for a patent jointly even though (1) they did not physically 
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 
to the subject matter of every claim of the patent.

35 U.S.C. 116, as amended by Public Law 98-622, 
recognizes the realities of modern team research. A 
research project may include many inventions. Some 
inventions may have contributions made by individuals 
who are not involved in other, related inventions.

35 U.S.C. 116 allows inventors to apply for a patent 
jointly even though

(A)they did not physically work together or at the 
same time,

(B)each did not make the same type or amount of 
contribution, or

(C)each did not make a contribution to the subject 
matter of every claim of the patent.

Items (A) and (B) adopt the rationale stated in decisions 
such as Monsanto Co. v. Kamp, 269 F. Supp. 
818, 824, 154 
USPQ 259, 262 (D.D.C. 1967).

Item (C) adopts the rationale of cases such as SAB 
Industrie AB v. Bendix Corp., 199 USPQ 95 (E.D. Va. 
1978).

With regard to item (A), see Kimberly-Clark Corp. 
v. Procter & Gamble Distributing Co., 973 F.2d 911, 
916-17, 23 USPQ 2d 1921, 1925-26 (Fed. Cir. 1992) 
(some quantum of collaboration or connection is 
required in order for persons to be “joint” inventors 
under 35 U.S.C. 116, and thus individuals who are 
completely ignorant of what each other has done until 
years after their individual independent efforts cannot 
be considered joint inventors).

Like other patent applications, jointly filed applications 
are subject to the requirements of 35 U.S.C. 121 that an application be directed to only a single invention. 
If more than one invention is included in the 
application, the examiner may require the application 
to be restricted to one of the inventions. In such a 
case, a "divisional" application complying with 35 
U.S.C. 120 would be entitled to the benefit of the earlier 
filing date of the original application.

It is possible that different claims of an application 
or patent may have different dates of inventions even 
though the patent covers only one independent and 
distinct invention within the meaning of 35 U.S.C. 
121. When necessary, the U.S. Patent and Trademark 
Office or a court may inquire of the patent applicant 
or owner concerning the inventors and the invention 
dates for the subject matter of the various claims.

GUIDELINES

37 CFR 1.45. Joint inventors.

(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 
application, each named inventor must have made a contribution, 
individually or jointly, to the subject matter of at least one claim 
of the application and the application will be considered to be a 
joint application under 35 U.S.C. 116. If multiple inventors are 
named in a provisional application, each named inventor must 
have made a contribution, individually or jointly, to the subject 
matter disclosed in the provisional application and the provisional 
application will be considered to be a joint application under 
35 U.S.C. 116.

Since provisional applications may be filed without 
claims, 37 CFR 1.45(c) states that each inventor 
named in a joint provisional application must have 
made a contribution to the subject matter disclosed in 
the application.

The significant features resulting from the amendments 
to 35 U.S.C. 116 by Public Law 98-622 are the 
following:

(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 
by signing the same; this is a clarification, but not 
a change in current practice.

(B)Inventors may apply for a patent jointly even 
though "they did not work together or at the same 
time," thereby clarifying (a) that it is not necessary 
that the inventors physically work together on a 
project, and (b) that one inventor may "take a step at 
one time, the other an approach at different times."

(C)Inventors may apply for a patent jointly even 
though "each did not make the same type or amount 
of contribution," thereby clarifying the "fact that each 
of the inventors play a different role and that the contribution 
of one may not be as great as that of another 
does not detract from the fact that the invention is 
joint, if each makes some original contribution, 
though partial, to the final solution of the problem." 

(D)Inventors may apply for a patent jointly even 
though "each did not make a contribution to the subject 
matter of every claim of the patent." 

(E)Inventors may apply for a patent jointly as 
long as each inventor made a contribution, i.e., was an 
inventor or joint inventor, of the subject matter of at 
least one claim of the patent; there is no requirement 
that all the inventors be joint inventors of the subject 
matter of any one claim.

(F)If an application by joint inventors includes 
more than one independent and distinct invention, 
restriction may be required with the possible result of 
a necessity to change the inventorship named in the 
application if the elected invention was not the invention 
of all the originally named inventors.

(G)The amendment to 35 U.S.C. 116 increases 
the likelihood that different claims of an application 
or patent may have different dates of invention; when 
necessary the Office or court may inquire of the patent 
applicant or owner concerning the inventors and the 
invention dates for the subject matter of the various 
claims.

Pending nonprovisional applications will be permitted 
to be amended by complying with 37 CFR 1.48to add claims to inventions by inventors not named 
when the application was filed as long as such inventions 
were disclosed in the application as filed since 
37 CFR 1.48 permits correction of inventorship where 
the correct inventor or inventors are not named in an 
application for patent through error without any 
deceptive intention on the part of the person being 
added as an inventor. This is specially covered in 37 
CFR 1.48(c).

Under 35 U.S.C. 116, an examiner may reject 
claims under 35 U.S.C. 102(f) only in circumstances 
where a named inventor is not the inventor of at least 
one claim in the application; no rejection under 35 
U.S.C. 102(f) is appropriate if a named inventor made 
a contribution to the invention defined in any claim of 
the application.

Under 35 U.S.C. 116, considered in conjunction 
with 35 
U.S.C. 103(c), a rejection may be appropriate 
under 35 
U.S.C. 102(f)/103 where the subject matter, 
i.e., prior 
art, and the claimed invention were not 
owned by, or subject to an obligation of assignment 
to, the same person at the time the invention was 
made.

Applicants are responsible for correcting, and are 
required to correct, the inventorship in compliance 
with 37 
CFR 1.48 when the application is amended to 
change the claims so that one (or more) of the named 
inventors is no longer an inventor of the subject matter 
of a claim remaining in the application.

In requiring restriction in an application filed by 
joint inventors, the examiner should remind applicants 
of the necessity to correct the inventorship pursuant 
to 37 CFR 1.48 if an invention is elected and the 
claims to the invention of one or more inventors are 
canceled.

If an application is filed with joint inventors, the 
examiner should assume that the subject matter of the 
various claims was commonly owned at the time the 
inventions covered therein were made, unless there is 
evidence to the contrary. If inventors of subject matter, 
not commonly owned at the time of the later 
invention, file a joint application, applicants have an 
obligation pursuant to 37 CFR 1.56 to point out the 
inventor and invention dates of each claim and the 
lack of common ownership at the time the later invention 
was made in order that the examiner may consider 
the applicability of 35 U.S.C. 102(e)/103, 
35 
U.S.C. 102(f)/103 or 35 U.S.C. 102(g)/103. The 
examiner should assume, unless there is evidence to 
the contrary, that applicants are complying with their 
duty of disclosure. It should be pointed out that 35 
U.S.C. 119(a) benefit may be claimed to any foreign 
application as long as the U.S. named inventor was 
the inventor of the foreign application invention and 
35 U.S.C. 119(a)-(d) requirements are met. Where 
two or more foreign applications are combined in a 
single U.S. application, to take advantage of the 
changes to 35 U.S.C. 103 or 35 U.S.C. 116, the U.S. 
application may claim benefit under 35 U.S.C. 119(a)
to each of the foreign applications provided all the 
requirements of 35 U.S.C. 119(a)-(d) are met. One of 
the conditions for benefit under 35 U.S.C. 119(a) is 
that the foreign application must be for “the same 
invention” as the application in the United States. 
Therefore, a claim in the U.S. application which relies 
on the combination of prior foreign applications may 
not be entitled to the benefit under 35 U.S.C. 119(a) if 
the subject matter of the claim is not sufficiently disclosed 
in the prior foreign application. Cf. Studiengesellschaft 
Kohle m.b.H. v. Shell Oil Co., 112 F.3d 
1561, 42 USPQ2d 1674 (Fed. Cir. 1997). For example:

If foreign applicant A invents X and files a foreign application; 
foreign applicant B invents Y and files separate 
foreign 
application. A+B combine inventions X+Y and A 
and B are proper joint inventors under 35 U.S.C. 116 and 
file U.S. application to X+Y. The U.S. application may 
claim benefit under 35 U.S.C. 119(a) to each of the for
eign applications provided the requirements of 35 U.S.C. 
119(a)-(d) are met.