The correction of misjoinder of inventors has been held to be a ground for reissue. See Ex parte Scudder, 169 USPQ 814, 815 (Bd. App. 1971) wherein the Board held that 35 U.S.C. 251 authorizes reissue applications to correct misjoinder of inventors where 35 U.S.C. 256 is inadequate. See also A.F. Stoddard & Co. v. Dann, 564 F.2d 556, 567 n.16, 195 USPQ 97, 106 n.16 (D.C. Cir. 1977) wherein correction of inventorship from sole inventor A to sole inventor B was permitted in a reissue application. The court noted that reissue by itself is a vehicle for correcting inventorship in a patent.
See MPEP §§ 602.01(c)et seq. for correction of inventorship in an application other than a reissue application.
I. CERTIFICATE OF CORRECTION AS A VEHICLE FOR CORRECTING INVENTORSHIP
While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be effected under the provisions of 35 U.S.C. 256 and 37 CFR 1.324 by filing a request for a certificate of correction if:
- (A) the only change being made in the patent is to correct the inventorship; and
- (B) all parties are in agreement and the inventorship issue is not contested.
See MPEP § 1481.02 for the procedure to be followed to obtain a certificate of correction for correction of inventorship.
II. REISSUE AS A VEHICLE FOR CORRECTING INVENTORSHIP
Where the provisions of 35 U.S.C. 256 and 37 CFR 1.324 do not apply, a reissue application is the appropriate vehicle to correct inventorship. The failure to name the correct inventive entity is an error in the patent which is correctable under 35 U.S.C. 251. The reissue oath or declaration pursuant to 37 CFR 1.175 must state that the applicant believes the original patent to be wholly or partly inoperative or invalid through error of a person being incorrectly named in an issued patent as the inventor, or through error of an inventor incorrectly not named in an issued patent, and, for applications filed before September 16, 2012, must also state that such error arose without any deceptive intention on the part of the applicant. The reissue oath or declaration must, as stated in 37 CFR 1.175, also comply with one of 37 CFR 1.63, 1.64, or 1.67 if the reissue application is filed on or after September 16, 2012, or comply with pre-AIA 37 CFR 1.63 if filed before September 16, 2012.
The reissue application with its reissue oath or declaration under 37 CFR 1.175 provides a complete mechanism to correct inventorship. See A.F. Stoddard & Co. v. Dann, 564 F.2d at 567, 195 USPQ at 106. A request under 37 CFR 1.48 or a petition under 37 CFR 1.324 cannot be used to correct the inventorship of a reissue application. If a request under 37 CFR 1.48 or a petition under 37 CFR 1.324 is filed in a reissue application, the request or petition should be dismissed and the processing or petition fee refunded. The material submitted with the request or petition should then be considered to determine if it complies with 37 CFR 1.175. If the material submitted with the request or petition does comply with the requirements of 37 CFR 1.175 (and the reissue application is otherwise in order), the correction of inventorship will be permitted as a correction of an error in the patent under 35 U.S.C. 251.
The correction of inventorship does not enlarge the scope of the patent claims. Where a reissue application does not seek to enlarge the scope of the claims of the original patent, the reissue oath may be made and sworn to, or the declaration made, by the assignee of the entire interest under 37 CFR 1.172. An assignee of part interest may not file a reissue application to correct inventorship where the other co-owner did not join in the reissue application and has not consented to the reissue proceeding. See Baker Hughes Inc. v. Kirk, 921 F. Supp. 801, 809, 38 USPQ2d 1885, 1892 (D.D.C. 1995). See 35 U.S.C. 251. On the other hand, an assignee of the entire interest can consent to and sign the reissue oath/declaration that adds or deletes the name of an inventor by reissue (e.g., correct inventorship from inventor A to inventors A and B) without the original inventor’s consent. Thus, the assignee of the entire interest can file a reissue to change the inventorship to one which the assignee believes to be correct, even though an inventor might disagree. The protection of the assignee’s property rights in the application and patent are statutorily based in 35 U.S.C. 118. For additional information pertaining to the right of an assignee to take action, see MPEP § 324 (for applications filed before September 16, 2012) and § 325 (for applications filed on or after September 16, 2012). Where the name of an inventor X is to be deleted in a reissue application to correct inventorship in a patent, and inventor X has not assigned his/her rights to the patent, inventor X has an ownership interest in the patent. Inventor X must consent to the reissue (37 CFR 1.172(a)), even though inventor X’s name is being deleted as an inventor. If X’s name is being deleted as an inventor, X consents to the reissue application, and the remaining inventors sign the reissue oath or declaration, X need not sign. If, however, an assignee signs the reissue oath or declaration, inventor X’s signature must also be included in the reissue oath or declaration as an assignee.