2920.01 Inventorship [R-07.2022]

Pursuant to 37 CFR 1.41(f), the inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3).

Inventorship may be corrected in accordance with the provisions of 37 CFR 1.48(a). See MPEP § 602.01(c)et seq. for a detailed discussion of correction of inventorship, correcting or updating the name of an inventor, and adjusting the order of the names of joint inventors. Note that a request to correct the inventorship filed under 37 CFR 1.48(a) should identify the inventorship change and must be accompanied by a signed application data sheet (ADS) including the legal name, residence, and mailing address of the inventor or each actual joint inventor (see 37 CFR 1.76(b)(1)) and the processing fee set forth in 37 CFR 1.17(i). The ADS submitted with a request under 37 CFR 1.48(a) must identify the information being changed with underlining for insertions and strike-through or brackets for text removed. See MPEP § 602.01(c)(1). In addition, in accordance with 37 CFR 1.48(c), a request to correct or change the inventorship under 37 CFR 1.48(a) filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in 37 CFR 1.17(d).

37 CFR 1.48(b) provides that an oath or declaration as required by 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration. Accordingly, where an inventor is added pursuant to 37 CFR 1.48(a) after publication of the international registration, an executed oath or declaration from the inventor will be required. See MPEP § 2920.04(c).

The name of an inventor may be corrected or updated and the order of the names of the joint inventors may be adjusted in accordance with the provisions of 37 CFR 1.41(f). 37 CFR 1.41(f) specifically provides that any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include: (1) an ADS in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name in the desired order (identifying the information that is being changed as required by 37 CFR 1.76(c)(2)); and (2) the processing fee set forth in 37 CFR 1.17(i). In addition to the corrected ADS, the request should also identify the desired inventor name change. See MPEP § 602.01(c)(2).

Under the laws of certain foreign countries, the creator may be a legal entity. Under U.S. national law, however, the inventor cannot be a juristic entity. Where a nonprovisional international design application identifies a juristic entity as an inventor, Form Paragraph 29.04 should be used to reject the claim under 35 U.S.C. 171 and 35 U.S.C. 115 for failing to set forth the correct inventorship: