Q) Non-signing Inventor (10.02.1a)

by patentbar on August 22, 2008 · 17 comments

in Exam Questions

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.

{ 17 comments… read them below or add one }

1 Art WilliamsNo Gravatar September 23, 2009 at 2:51 pm

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.

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2 AparnaNo Gravatar September 29, 2009 at 9:04 am

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.

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3 Art WilliamsNo Gravatar September 29, 2009 at 1:23 pm

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

Reply

4 jkpatentlawNo Gravatar June 16, 2012 at 11:44 am

Agreed….Keyword here was that PTO used “joint-inventor” in the question. This means they will be hoping for another inventor to execute the oath if at all possible. Of course, if they all refuse, then an assignee (i.e. someone with proprietary interest) can execute the application.

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5 ChadNo Gravatar October 4, 2009 at 9:17 pm

“E” could never be right because “D” is the silly answer. Showing a strong proprietary interest is irrelevant. Therefore, “C” is the best answer.

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6 sethzNo Gravatar February 3, 2010 at 2:34 pm

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.

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7 MattNo Gravatar August 11, 2010 at 11:12 am

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.

8 jkpatentlawNo Gravatar June 16, 2012 at 11:47 am

It is not silly to think someone with proprietary interest would execute the application. This is verbatim in the MPEP, but it is to be used when no inventors will execute the application. I.e. when all the inventors either refuse or cannot be located with diligent effort made.

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9 StephenNo Gravatar August 12, 2010 at 2:05 am

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.

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10 OverworkkedNo Gravatar April 22, 2011 at 12:31 pm

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.

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11 OverworkkedNo Gravatar April 22, 2011 at 12:35 pm

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. . . . “

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12 JeremyNo Gravatar October 18, 2011 at 4:22 pm

10/18/11 About 3 variants of this concept.

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13 IlbeNo Gravatar February 1, 2013 at 4:09 pm

So basically,
At least ONE or more inventor available: the rest of the inventors available
ALL inventors unavailable: Assignee, a person inventor agreed to assign, or a person with sufficient proprietary interest

Is it right?

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14 NicolaNo Gravatar April 26, 2013 at 12:01 pm

I tweaked Ilbe reply, anyone agree?

So basically,


At least ONE or more inventor available: The rest of the inventors available, … and post Sept 16, 2012, 37 C.F.R. § 1.42 says the Assignee too* (Anyone agree?)

ALL inventors unavailable: Assignee, a person inventor agreed to assign, or a person with sufficient proprietary interest

*It is now accepted that an Assignee may be the applicant in all
situations.

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15 DeaterNo Gravatar November 24, 2014 at 2:20 pm

Kind of wonder if, now in the post-AIA world, the correct answer would now be E. I know that the assignee or person of proprietary interest may apply on behalf of a non-cooperative inventor as long as they submit a supplemental statement of the conditions surrounding the non-cooperative inventor.

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16 T'sNo Gravatar December 21, 2014 at 5:24 pm

To Nicola and Deater above,

Yes, I believe that the Assignee is now perfectly able to file the application, according to Section 1.46.

Plus, see 1.46(d), which further illustrates the Applicant can file the application, but an Oath or Declaration is still required:

1.46 (d) Even if the whole or a part interest in the invention or in the patent to be issued is assigned or obligated to be assigned, an oath or declaration must be executed by the actual inventor or each actual joint inventor, except as provided for in § 1.64 . See § 1.64 concerning the execution of a substitute statement by an assignee, person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter.

*Note the point that if there is no available inventor to execute, then you can use 1.64.

Thanks.

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17 mmmaryNo Gravatar June 22, 2015 at 3:56 pm

agree on E

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