602.09 Joint Inventors [R-10.2019]

602.09 Joint Inventors [R-10.2019]

35 U.S.C. 116  Inventors.

[Editor Note: Applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 116 (pre-AIA) for the law otherwise applicable.]

  • (a) JOINT INVENTIONS.—When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
  • (b) OMITTED INVENTOR.—If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.
  • (c) CORRECTION OF ERRORS IN APPLICATION.—Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, the Director may permit the application to be amended accordingly, under such terms as he prescribes.

35 U.S.C. 116 (pre-AIA)  Inventors.

[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 116 for the law otherwise applicable.]

When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.

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37 CFR 1.45 Joint inventors.

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  • (b) Inventors may apply for a patent jointly even though:
    • (1) They did not physically work together or at the same time;
    • (2) Each inventor did not make the same type or amount of contribution; or
    • (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
  • (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.

Joint inventors do not have to separately “sign the application,” but only need apply for the patent jointly and make the required oath or declaration in a nonprovisional application by signing the same. See MPEP §§ 602.01(a) and 602.01(b).

Because provisional applications may be filed without claims, 37 CFR 1.45(c) states that each inventor named in a joint provisional application must have made a contribution to the subject matter disclosed in the application.

35 U.S.C. 116 recognizes the realities of modern team research. A research project may include many inventions. Some inventions may have contributions made by individuals who are not involved in other, related inventions.

35 U.S.C. 116 (and 37 CFR 1.45) allows inventors to apply for a patent jointly even though

  • (A) they did not physically work together or at the same time,
  • (B) each did not make the same type or amount of contribution, or
  • (C) each did not make a contribution to the subject matter of every claim of the patent.

See MPEP § 2109.01 for a discussion of the legal requirements for joint inventorship.

Applicants are responsible for correcting, and are required to correct, the inventorship in compliance with 37 CFR 1.48 when the application is amended to change the claims so that one (or more) of the named inventors is no longer an inventor of the subject matter of a claim remaining in the application. Requests under 37 CFR 1.48 filed on or after September 16, 2012 (regardless of the application filing date) are treated by OPAP. If the request is granted, OPAP will correct the Office records and send a corrected filing receipt.

Like other patent applications, jointly filed applications are subject to the requirements of 35 U.S.C. 121 that an application be directed to only a single invention. If an application by joint inventors includes more than one independent and distinct invention, restriction may be required with the possible result of a necessity to change the inventorship named in the application if the elected invention was not the invention of all the originally named inventors. In such a case, a “divisional” application complying with 35 U.S.C. 120 would be entitled to the benefit of the earlier filing date of the original application. In requiring restriction in an application filed by joint inventors, the examiner should remind applicants of the necessity to correct the inventorship pursuant to 37 CFR 1.48 if an invention is elected and the claims to the invention of one or more inventors are canceled.

35 U.S.C. 116 increases the likelihood that different claims of an application or patent may have different dates of invention even though the patent covers only one independent and distinct invention within the meaning of 35 U.S.C. 121. The examiner should not inquire of the patent applicant concerning the inventors and the invention dates for the subject matter of the various claims until it becomes necessary to do so in order to properly examine the application. If an application is filed with joint inventors, the examiner should assume that the subject matter of the various claims was commonly owned at the time the inventions covered therein were made, unless there is evidence to the contrary. When necessary, the U.S. Patent and Trademark Office or a court may inquire of the patent applicant or owner the inventorship or ownership of each claimed invention on its effective filing date, or on its date of invention, as applicable. 37 CFR 1.110. Pending nonprovisional applications will be permitted to be amended by complying with 37 CFR 1.48 to add claims to inventions by inventors not named when the application was filed as long as such inventions were disclosed in the application as filed since 37 CFR 1.48 permits correction of inventorship where the correct inventor or inventors are not named in an application for patent.