Correction of Named Inventor

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

35 U.S.C. 256

was amended to remove

the requirement that the error was made “without deceptive intention,” practitioners

still have a duty to conduct a reasonable inquiry to name the actual inventors in a

patent application. Specifically,

35 U.S.C. 115(i)

requires that any

declaration or statement filed pursuant to

35 U.S.C. 115

must contain an

acknowledgement that any willful false statement made in the declaration or statement is

punishable under

18

U.S.C. 1001

by fine or imprisonment of not more than five (5)

years, or both. Similarly, in naming inventors in an application data sheet, a

provisional cover sheet or another paper, the person signing the papers is making a

certification under

37

CFR 11.18(b)

, including a certification that all statements made

in the papers are believed to be true. See

37 CFR 1.4(d)(4)

.

In

Egenera, Inc. v Cisco Sys., Inc.,

972 F.3d 1367, 2020 USPQ2d 10997 (Fed. Cir. 2020), the court found that the patent owner

was not judicially estopped from adding an inventor back to the patent when the patent

owner removed that inventor during an early Office proceeding involving the patent

g a certification that all statements made

in the papers are believed to be true. See

37 CFR 1.4(d)(4)

.

In

Egenera, Inc. v Cisco Sys., Inc.,

972 F.3d 1367, 2020 USPQ2d 10997 (Fed. Cir. 2020), the court found that the patent owner

was not judicially estopped from adding an inventor back to the patent when the patent

owner removed that inventor during an early Office proceeding involving the patent.

Specifically, the patent owner submitted a petition to remove an inventor due to claim

construction advanced in an Office proceeding and that inventor was removed from the

patent by the Office as a matter of formality by the “ministerial”

35 U.S.C. 256

process. In a related court proceeding, a different claim construction construing “logic

to modify” as a means plus function limitation was adopted by the district court and

affirmed on appeal. As a result of the different claim interpretation in the court

decisions, the patent owner appropriately requested that the deleted inventor be added

back to the patent.

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

e 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, including a legal

name change, 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, including a legal name change, after the patent issues is not a

correction of inventorship under

35 U.S.C. 256

ge 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, including a legal name change, after the patent issues is not a

correction of inventorship under

35 U.S.C. 256

.

Similarly, where an inventor changes their name,

including a legal name change, prior to issuance of the patent but did not correct their

name while the patent application was pending, a certificate of correction cannot be

filed to effect the inventor name change in the patent because the name of the inventor

was correct at the time of filing the application and was not changed during the

pendency of the application. Submitting a request for correction of inventorship under

35 U.S.C.

256

due to an inventor that changed their legal name is

inappropriate.

All requests to make a correction of a named inventor

should include the certificate of correction form (PTO/SB/44). If the completed form is

not provided, the name of the inventors along with their residence information is

required for the Office to print the certificate of correction.

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) CORRECTION.- 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.

mber

16, 2012.]

35 U.S.C. 256

Correction of named inventor.

(a) CORRECTION.- 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 CFR 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

.

isagreement 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

must be submitted to

the Certificates of Correction Branch. In addition, form PTO/SB/44 should be

filed.

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.

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

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 CFR 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.

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

(4) The fee set forth in

§

1.20(b)

.

(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

ubpart 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

e-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-306 to respond to the request under

37 CFR 1.324

. Alternatively, form

paragraphs

10.13

through

10.18

may be used.