Section 409.03(i) Rights of the Nonsigning Inventor

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]

The nonsigning inventor (also referred to as an “inventor designee”) may protest his or her designation as an inventor. The nonsigning inventor is entitled to inspect any paper in the application, order copies thereof at the price set forth in 37 CFR 1.19, and make his or her position of record in the file wrapper of the application. Alternatively, the nonsigning inventor may arrange to do any of the preceding through a registered patent attorney or agent.

While the U.S. Patent and Trademark Office will grant the nonsigning inventor access to the application, inter partesproceedings will not be instituted in a pre-AIA 37 CFR 1.47 case. In re Hough, 108 USPQ 89 (Comm’r Pat. 1955). A nonsigning inventor is not entitled to a hearing (Cogar v. Schuyler, 464 F.2d 747, 173 USPQ 389 (D.C. Cir. 1972)), and is not entitled to prosecute the application if status under pre-AIA 37 CFR 1.47 has been accorded, or if proprietary interest of the pre-AIA 37 CFR 1.47(b) applicant has been shown to the satisfaction of the U.S. Patent and Trademark Office.

A nonsigning inventor may join in a pre-AIA 37 CFR 1.47 application. To join in the application, the nonsigning inventor must file an appropriate pre-AIA 37 CFR 1.63 oath or declaration. Even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the 37 CFR 1.47 applicant. See MPEP § 402.10.

The rights of a nonsigning inventor are protected by the fact that the patent resulting from an application filed under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118 must issue to the inventor, and in an application filed under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has the same rights that he or she would have if he or she had joined in the application. In re Hough, 108 USPQ 89 (Comm’r Pat. 1955).

If a nonsigning inventor feels that he or she is the sole inventor of an invention claimed in a pre-AIA 37 CFR 1.47application naming him or her as a joint inventor, the nonsigning inventor may file his or her own application and request that his or her application be placed in interference with the pre-AIA 37 CFR 1.47 application. If the claims in both the nonsigning inventor’s application and the pre-AIA 37 CFR 1.47 application are otherwise found allowable, an interference may be declared.