1481.02 Correction of Named Inventor [R-07.2022]

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. 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. 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.

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.]

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.
• (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.]

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-306 to respond to the request under 37 CFR 1.324. Alternatively, form paragraphs 10.13 through 10.18 may be used.