MPEP 1481.02
Correction of Named Inventor

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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1481.02    Correction of Named Inventor [R-08.2017]

35 U.S.C. 256 permits the Director to issue a certificate correcting the inventors named in a patent; 37 CFR 1.324 provides the criteria for requests to correct inventorship in a patent. Pre-AIA 35 U.S.C. 256 requires that any error to be corrected must have been made "without deceptive intention." Effective September 16, 2012, Public Law 112-29, sec. 20, 125 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended 35 U.S.C. 256 to eliminate the "without deceptive intention" clause. See subsection I., below, for the requirements of a petition filed on or after September 16, 2012 to correct inventorship in a patent, and subsection II., below, for the requirements of such a petition filed before September 16, 2012.

While a request under 37 CFR 1.48 is appropriate to correct inventorship in a nonprovisional application, a petition under 37 CFR 1.324 is the appropriate vehicle to correct inventorship in a patent. If a request under 37 CFR 1.48 is inadvertently filed in a patent, the request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set forth in subsection III., below should be used.

Similarly, if a request under 37 CFR 1.48(a), (b), or (c) is filed in a pending application but not acted upon until after the application becomes a patent, the request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set forth below should be used.

The statutory basis for correction of inventorship in a patent under 37 CFR 1.324 is 35 U.S.C. 256. It is important to recognize that 35 U.S.C. 256 is stricter than 35 U.S.C. 116, the statutory basis for corrections of inventorship in applications under 37 CFR 1.48. 35 U.S.C. 256 requires "on application of all the parties and assignees," while 35 U.S.C. 116 does not have the same requirement. Correction of inventorship in a patent under 37 CFR 1.324 requires petition of all the parties, i.e., originally named inventors and assignees, in accordance with statute (35 U.S.C. 256 ) and thus the requirement cannot be waived.

Where applicant’s typographical error in an inventor’s name is recognized after the patent issues, a certificate of correction under 37 CFR 1.323, the fee set forth in 37 CFR 1.20(a), a petition under 37 CFR 1.182, and the petition fee set forth in 37 CFR 1.17(f) must be filed to request correction of the typographical error in the inventor’s name.

Where an inventor changes their name after the patent issues, a certificate of correction cannot be filed to effect the name change in the patent. An inventor name change after a patent issues is neither a "mistake of a clerical or typographical nature, or of minor character" in accordance with 35 U.S.C. 255, nor a mistake that "is clearly disclosed by the records of the Office" in accordance with 35 U.S.C. 254. Additionally, an inventor name change after the patent issues is not a correction of inventorship under 35 U.S.C. 256.

I.    REQUEST FILED ON OR AFTER SEPTEMBER 16, 2012, TO CORRECT NAMED INVENTOR

[Editor Note: See subsection II. below, for requests filed before September 16, 2012.]

35 U.S.C. 256 Correction of named inventor.

  • (a) CORRECION.- Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.
  • (b) PATENT VALID IF ERROR CORRECTED.- The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.

37 C.F.R. 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256.

  • (a) Whenever through error a person is named in an issued patent as the inventor, or an inventor is not named in an issued patent, the Director, pursuant to 35 U.S.C. 256, may, on application of all the parties and assignees, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors.
  • (b) Any request to correct inventorship of a patent pursuant to paragraph (a) of this section must be accompanied by:
    • (1) A statement from each person who is being added as an inventor and each person who is currently named as an inventor either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change;
    • (2) A statement from all assignees of the parties submitting a statement under paragraph (b)(1) of this section agreeing to the change of inventorship in the patent, which statement must comply with the requirements of § 3.73(c) of this chapter; and
    • (3) The fee set forth in § 1.20(b).
  • (c) For correction of inventorship in an application, see § 1.48.
  • (d) In an interference under part 41, subpart D, of this title, a request for correction of inventorship in a patent must be in the form of a motion under § 41.121(a)(2) of this title. In a contested case under part 42, subpart D, of this title, a request for correction of inventorship in a patent must be in the form of a motion under § 42.22 of this title. The motion under § 41.121(a)(2) or § 42.22 of this title must comply with the requirements of this section.

In requesting the Office to effectuate a court order correcting inventorship in a patent pursuant to 35 U.S.C. 256, a copy of the court order and a certificate of correction under 37 CFR 1.323 should be submitted to the Certificates of Correction Branch.

A petition filed on or after September 16, 2012 to correct the inventorship in a patent must be accompanied by all of the following:

  • (1) A statement from each person who is being added as an inventor and each person who is currently named as an inventor. Each inventor statement must either agree to the change of inventorship or state that the inventor has no disagreement in regard to the requested change. See 37 CFR 1.324(b)(1).
  • (2) A statement is required from the assignee(s) of the parties submitting a statement under 37 CFR 1.324(b)(1) agreeing to the change of inventorship in the patent, which statement must comply with the requirements of 37 CFR 3.73(c). See 37 CFR 1.324(b)(2). See MPEP § 325 as to the requirements of a statement under 37 CFR 3.73(c). A statement is required by each entity having an ownership interest in the patent.
  • (3) The fee set forth in 37 CFR 1.20(b).

If an inventor is not available, or refuses, to submit a statement, the assignee of the patent may wish to consider filing a reissue application to correct inventorship, because the inventor’s statement is not required for a non-broadening reissue application to correct inventorship. See MPEP § 1412.04.

For correction of inventorship in a patent in an interference under 37 CFR part 41, subpart D, 37 CFR 1.324(d) provides that a request for correction of inventorship must be in the form of a motion under 37 CFR 41.121(a)(2). For correction of inventorship in a contested case under 37 CFR part 42, subpart D, 37 CFR 1.324(d) provides that a request for correction of inventorship in a patent must be in the form of a motion under 37 CFR 42.22. 37 CFR 1.324(d) further provides that the motion made under 37 CFR 41.121(a)(2) or 42.22 must comply with the requirements of 37 CFR 1.324.

II.    REQUEST FILED BEFORE SEPTEMBER 16, 2012, TO CORRECT NAMED INVENTOR

[Editor Note: See subsection I. above, for requests filed on or after September 16, 2012.]

Pre-AIA 35 U.S.C. 256  Correction of named inventor

Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.

Pre-AIA 37 C.F.R. 1.324  Correction of inventorship in patent, pursuant to 35 U.S.C. 256.

  • (a) Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his or her part, the Director, pursuant to 35 U.S.C. 256, may, on application of all the parties and assignees, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors. A petition to correct inventorship of a patent involved in an interference must comply with the requirements of this section and must be accompanied by a motion under § 41.121(a)(2) or § 41.121(a)(3) of this title.
  • (b) Any request to correct inventorship of a patent pursuant to paragraph (a) of this section must be accompanied by:
    • (1) Where one or more persons are being added, a statement from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on his or her part;
    • (2) A statement from the current named inventors who have not submitted a statement under paragraph (b)(1) of this section either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change;
    • (3) A statement from all assignees of the parties submitting a statement under paragraphs (b)(1) and (b)(2) of this section agreeing to the change of inventorship in the patent, which statement must comply with the requirements of § 3.73(b) of this chapter; and
  • (c) For correction of inventorship in an application, see §§ 1.48 and 1.497.
  • (d) In a contested case before the Board of Patent Appeals and Interferences under part 41, subpart D, of this title, a request for correction of a patent must be in the form of a motion under § 41.121(a)(2) or § 41.121(a)(3) of this title.

In requesting the Office to effectuate a court order correcting inventorship in a patent pursuant to 35 U.S.C. 256, a copy of the court order and a certificate of correction under 37 CFR 1.323 must be submitted to the Certificates of Correction Branch. A petition filed before September 16, 2012 to correct the inventorship in a patent must comply with the requirements of pre-AIA 37 CFR 1.324, and must include the statements and fee required by pre-AIA 37 CFR 1.324(b).

Under pre-AIA 37 CFR 1.324(b)(1), a statement is required from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on their part. In order to satisfy this, a statement such as the following is sufficient:

"The inventorship error of failing to include John Smith as an inventor of the patent occurred without any deceptive intention on the part of John Smith."

Nothing more is required. The examiner will determine only whether the statement contains the required language; the examiner will not make any comment as to whether or not it appears that there was in fact deceptive intention (see MPEP § 2012).

Under pre-AIA 37 CFR 1.324(b)(2), all current inventors who did not submit a statement under pre-AIA 37 CFR 1.324(b)(1) must submit a statement either agreeing to the change of inventorship, or stating that they have no disagreement with regard to the requested change. "Current inventors" include the inventor(s) being retained as such and the inventor(s) to be deleted. These current inventors need not make a statement as to whether the inventorship error occurred without deceptive intention. If an inventor is not available, or refuses, to submit a statement, the assignee of the patent may wish to consider filing a reissue application to correct inventorship, because the inventor’s statement is not required for a non-broadening reissue application to correct inventorship. See MPEP § 1412.04.

Under pre-AIA 37 CFR 1.324(b)(2), a statement is required from the assignee(s) of the patent agreeing to the change of inventorship in the patent. The assignee statement agreeing to the change of inventorship must be accompanied by a proper statement under pre-AIA 37 CFR 3.73(b) establishing ownership, unless such a proper statement is already in the file. See MPEP § 324 as to the requirements of a statement under pre-AIA 37 CFR 3.73(b).

III.    PETITION UNDER 37 CFR 1.324

Correction of inventorship requests under 37 CFR 1.324 should be directed to the Supervisory Patent Examiner (SPE) whose unit handles the subject matter of the patent. The SPE may use Form PTOL-360 to respond to the request under 37 CFR 1.324. Alternatively, form paragraphs 10.13 through 10.18 may be used.

¶ 10.13    Petition Under 37 CFR 1.324, Granted

In re Patent No. [1] : Issue Date: [2] : DECISION Appl. No.: [3] : GRANTING Filed: [4] : PETITION For: [5] : 37 CFR 1.324

This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.

The petition is granted.

The patented file is being forwarded to Certificates of Correction Branch for issuance of a certificate naming only the actual inventor or inventors.

_______________________

[7]

Supervisory Patent Examiner,

Art Unit [8],

Technology Center [9]

[10]

Examiner Note:

1. Petitions to correct inventorship of an issued patent are decided by the Supervisory Patent Examiner, as set forth in the Commissioner’s memorandum dated June 2, 1989.

2. In bracket 10, insert the correspondence address of record.

3. This form paragraph is printed with the USPTO letterhead.

4. Prepare Certificate using form paragraph 10.15.

¶ 10.14    Treatment of Request Under 37 CFR 1.48 Petition Under 37 CFR 1.324, Petition Granted

In re Patent No. [1] : Issue Date: [2] : DECISION Appl. No.: [3] : GRANTING Filed: [4] : PETITION For: [5] : 37 CFR 1.324

This is a decision on the request under 37 CFR 1.48, filed [6]. In view of the fact that the patent has already issued, the request under 37 CFR 1.48 has been treated as a petition to correct inventorship under 37 CFR 1.324.

The petition is granted.

The patented file is being forwarded to Certificates of Correction Branch for issuance of a certificate naming only the actual inventor or inventors.

_______________________

[7]

Supervisory Patent Examiner,

Art Unit [8],

Technology Center [9]

[10]

Examiner Note:

1. Petitions to correct inventorship of an issued patent are decided by the Supervisory Patent Examiner, as set forth in the Commissioner’s memorandum dated June 2, 1989.

2. This form paragraph is printed with the USPTO letterhead.

3. Prepare Certificate using form paragraph 10.15.

4. In bracket 10, insert the correspondence address of record.

¶ 10.15    Memorandum - Certificate of Correction (Inventorship)

DATE: [1] TO: Certificates of Correction Branch FROM: [2], SPE, Art Unit [3] SUBJECT: Request for Certificate of Correction

Please issue a Certificate of Correction in U. S. Letters Patent No. [4] as specified on the attached Certificate.

______________________

[5], SPE

Art Unit [6]

UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE Patent No. [7] Patented: [8]

On petition requesting issuance of a certificate for correction of inventorship pursuant to 35 U.S.C. 256, it has been found that the above identified patent improperly sets forth the inventorship. Accordingly, it is hereby certified that the correct inventorship of this patent is:

[9]

_________________________

[10], Supervisory Patent Examiner

Art Unit [11]

Examiner Note:

1. In bracket 9, insert the full name and residence (City, State) of each actual inventor.

2. This is an internal memo, not to be mailed to applicant, which accompanies the patented file to Certificates of Correction Branch as noted in form paragraphs 10.13 and 10.14.

3. In brackets 5 and 10, insert name of SPE; in brackets 6 and 11 the Art Unit and sign above each line.

4. Two separate pages of USPTO letterhead will be printed when using this form paragraph.

¶ 10.16.fti    Petition Under 37 CFR 1.324 filed prior to September 16, 2012, Dismissed

In re Patent No. [1] : Issue Date: [2] : DECISION Appl. No.: [3] : DISMISSING Filed: [4] : PETITION For: [5] : 37 CFR 1.324

This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.

The petition is dismissed.

A petition to correct inventorship under 37 CFR 1.324 filed before September 16, 2012, requires (1) a statement from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on their part, (2) a statement from the current named inventors (including any "inventor" being deleted) who have not submitted a statement as per "(1)" either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change, (3) a statement in compliance with 3.73(b) from all assignees of the parties submitting a statement under "(1)" and "(2)" agreeing to the change of inventorship in the patent; and (4) the fee set forth in 37 CFR 1.20(b).This petition lacks item(s) [7].

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Technology Center [10]

[11]

Examiner Note:

1. If each of the four specified items has been submitted but one or more is insufficient, the petition should be denied. See form paragraph 10.17. However, if the above noted deficiency can be cured by the submission of a renewed petition, a dismissal would be appropriate.

2. If the petition includes a request for suspension of the rules (37 CFR 1.183 ) of one or more provisions of 37 CFR 1.324 that are required by the statute (35 U.S.C. 256 ), form paragraph 10.18 should follow this form paragraph.

3. In bracket 7, pluralize as necessary and insert the item number(s) which are missing.

4. In bracket 11, insert correspondence address of record.

5. This form paragraph is printed with the USPTO letterhead.

6 This form paragraph should only be used if the petition under 37 CFR 1.324 was filed before September 16, 2012. If the petition was filed on or after September 16, 2012, use form paragraph 10.16.01.

¶ 10.16.01    Petition Under 37 CFR 1.324 filed on or after September 16, 2012, Dismissed

In re Patent No. [1] :

Issue Date: [2] : DECISION

Appl. No.: [3] : DISMISSING

Filed: [4] : PETITION

For: [5] : 37 CFR 1.324

This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.

The petition is dismissed.

A petition to correct inventorship under 37 CFR 1.324 filed on or after September 16, 2012, requires (1) a statement from each person who is being added as an inventor and each person who is currently named as an inventor (including any "inventor" being deleted) either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change, (2) a statement in compliance with 37 CFR 3.73(c) from all assignees of the parties submitting a statement under "(1)" agreeing to the change of inventorship in the patent; and (3) the fee set forth in 37 CFR 1.20(b). This petition lacks item(s) [7].

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Technology Center [10]

[11]

Examiner Note:

1. If each of the three specified items has been submitted but one or more is insufficient, the petition should be denied. See form paragraph 10.17. However, if the above noted deficiency can be cured by the submission of a renewed petition, a dismissal would be appropriate.

2. If the petition includes a request for suspension of the rules (37 CFR 1.183 ) of one or more provisions of 37 CFR 1.324 that are required by the statute (35 U.S.C. 256 ), form paragraph 10.18 should follow this form paragraph.

3. In bracket 7, pluralize as necessary and insert the item number(s) which are missing.

4. In bracket 11, insert correspondence address of record.

5. This form paragraph is printed with the USPTO letterhead.

¶ 10.17    Petition Under 37 CFR 1.324, Denied

In re Patent No. [1] : Issue Date: [2] :DECISION DENYING PETITION Appl. No.: [3] : 37 CFR 1.324 Filed: [4] : For: [5] :

This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.

The petition is denied.

[7]

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Technology Center [10]

[11]

Examiner Note:

1. In bracket 7, a full explanation of the deficiency must be provided.

2. If the petition lacks one or more of the required parts set forth in 37 CFR 1.324, it should be dismissed using form paragraph 10.14 or 10.20, rather than being denied.

3. In bracket 11, insert correspondence address of record.

4. This form paragraph is printed with the USPTO letterhead.

¶ 10.18    Waiver of Requirements of 37 CFR 1.324 Under 37 CFR 1.183, Dismissed

Suspension of the rules under 37 CFR 1.183 may be granted for any requirement of the regulations which is not a requirement of the statutes. In this instance, 35 U.S.C. 256 requires [1]. Accordingly, the petition under 37 CFR 1.183 is dismissed.

Examiner Note:

1. This form paragraph should follow form paragraph 10.16.fti whenever the petition requests waiver of one or more of the provisions of 37 CFR 1.324 that are also requirements of 35 U.S.C. 256.

2. If the petition requests waiver of requirements of 37 CFR 1.324 that are not specific requirements of the statute (i.e., the fee or the oath or declaration by all inventors), the application must be forwarded to a petitions attorney in the Office of the Deputy Commissioner for Patent Examination Policy for decision.