1412.05 Correction of Inventorship in a Broadening Reissue Application [R-08.2017]
[Editor Note: See subsection II, below, for reissue applications filed before September 16, 2012.]
Where a reissue application to correct inventorship is filed on or after September 16, 2012, and the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest, the assignee may sign the inventor’s oath or declaration even where the application also seeks to enlarge the scope of the claims of the original patent. If the application for the original patent was not filed under 37 CFR 1.46 by the assignee of the entire interest, then the signature of all of the inventors is needed on the oath or declaration except as provided for in 37 CFR 1.64. Note that under 37 CFR 1.64, the assignee of the entire interest may sign a substitute statement where the inventor is deceased, legally incapacitated, refuses to execute the reissue oath or declaration, or cannot be found or reached after diligent effort. See MPEP § 604.
In situations where a reissue application seeks to correct inventorship in the patent and the inventors sign the reissue oath or declaration for a broadening reissue application, the correct inventive entity must sign the reissue oath or declaration.
If an inventor is being deleted in a reissue application to correct inventorship in a patent and the inventors are required to sign the oath or declaration, the inventor being deleted need not sign the reissue oath or declaration. For example, a reissue application is filed to correct inventorship from inventors A, B, and C (listed as inventors on the patent) to inventors A and B. Inventor C is being deleted as a named inventor. In such a case, A and B are the correct inventors, and accordingly, (in situations where the assignee is not permitted to sign) inventors A and B must sign the reissue oath or declaration but inventor C need not sign the reissue oath or declaration.
If an inventor is being added in a reissue application to correct inventorship in a patent or to correct an error in the scope of the claims that results in the addition of one or more inventors, the inventor being added must sign the reissue oath or declaration together with the inventors previously designated on the patent.
Example 1: A reissue application is filed to correct the inventorship from inventors A and B (listed as inventors on the patent) to inventors A, B, and C. Inventor C is the inventor being added.
Example 2: Inventors A and B are correctly listed on the patent. A reissue application for the patent is filed to add new claims. Inventor C is being added because of the addition of the new claims.
In both examples, A, B, and C are the correct inventors in the reissue application, and accordingly, each of A, B, and C must sign the reissue oath or declaration. If inventor C refuses to sign, the assignee of the entire interest may sign a substitute statement under 37 CFR 1.64. Thus, even where an application changes the claims to enlarge the scope of the patent claims in addition to the inventorship change, and the application for the original patent was not filed under 37 CFR 1.46 by the assignee of the entire interest, the assignee can add an inventor who refuses to sign by making use of 37 CFR 1.64.
II. REISSUE APPLICATION FILED BEFORE SEPTEMBER 16, 2012
[Editor Note: See subsection I, above, for reissue applications filed on or after September 16, 2012.]
Where a reissue application to correct inventorship is filed before September 16, 2012, and that application also changes the claims to enlarge the scope of the patent claims, the signature of all the inventors is needed. However, if an inventor refuses to sign the reissue oath or declaration because the inventor believes the change in inventorship (to be effected) is not correct, the reissue application can still be filed with a petition under pre-AIA 37 CFR 1.47 without that inventor’s signature, provided the written consent of all owners/assignees as required by pre-AIA 37 CFR 1.172(a) is also submitted. Compare, however, the situation where a patent to inventors X and Y has no assignee, a reissue application is filed by inventor Y to delete the name of inventor X as an inventor and to broaden the patent. Inventor X refuses to sign the reissue oath or declaration and refuses to provide the consent as required by pre-AIA 37 CFR 1.172(a). In this instance, a pre-AIA 37 CFR 1.47 petition would not be appropriate to permit the filing of the reissue application because the consent requirement of pre-AIA 37 CFR 1.172(a) for each owner/assignee is not met. Resort to the courts would be required to delete the name of inventor X as an inventor where X will not consent to the filing of a reissue application. As stated in the second paragraph of pre-AIA 35 U.S.C. 256, “[t]he 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.”