1. In accordance with the MPEP and USPTO rules and procedure, an application for patent may be made on behalf of a joint inventor in certain situations. Who, by petition, may make application on behalf of a joint inventor who has refused to sign the application (“nonsigning inventor”), if the other joint inventor (“signing inventor”) executes the application?
(A) A person other than the signing inventor, to whom the nonsigning inventor has assigned the invention.
(B) A person other than the signing inventor, with whom the nonsigning inventor has agreed in writing to assign the invention.
(C) The signing inventor.
(D) A person other than the signing inventor, who shows a strong proprietary interest in the invention.
(E) All of the above.
1. ANSWER: Choice (C) is the correct answer. MPEP § 409.03(a), and 37 C.F.R. § 1.47(a).
37 C.F.R. § 1.47(a) provides, “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 or herself and the nonsigning inventor. The oath or declaration in
such an application must be accompanied by a petition including proof of the pertinent facts, the
fee set forth in § 1.17(h), and the last known address of the nonsigning inventor. The nonsigning
inventor may subsequently join in the application by filing an oath or declaration complying with
§ 1.63.” Choices (A), (B), and (D) are each incorrect because they are not provided for by 37
C.F.R. § 1.47(a). MPEP § 409.03 (b), in pertinent part provides, “Where 37 C.F.R. § 1.47(a) is
available, application cannot be made under 37 C.F.R. § 1.47(b).” Choice (E) is incorrect
because choices (A), (B), and (D) are each incorrect.
{ 10 comments… read them below or add one }
I don’t understand how to reconcile the correctness of answer “C” above with the passage below from USC 118.
Thanks very much, Art Williams
Whenever an inventor refuses to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom the inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage; and the Director may grant a patent to such inventor upon such notice to him as the Director deems sufficient, and on compliance with such regulations as he prescribes.
I believe the answer is that if there is a joint inventor, the inventor must make the application but if all of the inventors cannot be found or refuse, the assignee may then continue with the application. See 37 C.F.R. 1.47:
37 CFR 1.47. Filing when an inventor refuses to sign or cannot be reached.
(a)**>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 or herself and the nonsigning inventor. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts, the fee set forth in § 1.17(g), and the last known address of the nonsigning inventor. The nonsigning inventor may subsequently join in the application by filing an oath or declaration complying with § 1.63Whenever all of the inventors refuse to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom an inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for all the inventors.
Thanks for your thoughtful response.
Isn’t it true, however, that while the section of CFR 1.47 you cite supports the correctness of answer “c”, the portion of USC 118 that I cite supports answers “a”, “b” and “d”? Doesn’t that make answer “e” the correct response?
Thanks again, Art Williams
“E” could never be right because “D” is the silly answer. Showing a strong proprietary interest is irrelevant. Therefore, “C” is the best answer.
1.47(b)
Whenever all of the inventors refuse to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom an inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for all the inventors.
1.47(b) of course is only when ALL inventors refuse to sign. The above question is if one joint inventor refuses.
I assume you referenced 1.47(b) just to show that it isn’t “silly” to think that a proprietary interest could ever sign, but I just want to clarify in case anyone wants to apply that rule to this question.
I also picked E because of what is stated in MPEP 409.03. However, the question specifically states that the other inventor is willing to execute the application, therefore he is willing to sign and can sign for the non-signing inventor. If the question had stated that both inventors refused to sign then the answer would have been A, B, & D.
Notice that 35 USC 118 allows the director lots of leeway to create regulations..
“. . . and the Director may grant a patent to such inventor upon such notice to him as the Director deems sufficient, and on compliance with such regulations as he prescribes.”
Thus you must look to the regulations to find the appropriate path for the circumstances.
35 USC 116 clarifies the 118 ambiguity, specifically answering the question.
“. . . 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. . . . “
10/18/11 About 3 variants of this concept.