Comments on: Q) Non-signing Inventor (10.02.1a)

By: Jeremy

Jeremy — Tue, 18 Oct 2011 20:22:13 +0000

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

By: Overworkked

Overworkked — Fri, 22 Apr 2011 16:35:12 +0000

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. . . . “

By: Overworkked

Overworkked — Fri, 22 Apr 2011 16:31:35 +0000

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.

By: Stephen

Stephen — Thu, 12 Aug 2010 06:05:45 +0000

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.

By: Matt

Matt — Wed, 11 Aug 2010 15:12:49 +0000

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.

By: sethz

sethz — Wed, 03 Feb 2010 18:34:46 +0000

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.

By: Chad

Chad — Mon, 05 Oct 2009 01:17:23 +0000

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

By: Art Williams

Art Williams — Tue, 29 Sep 2009 17:23:30 +0000

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

By: Aparna

Aparna — Tue, 29 Sep 2009 13:04:58 +0000

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.

By: Art Williams

Art Williams — Wed, 23 Sep 2009 18:51:27 +0000

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.