Q) Smith and Jones (4.02.38p)

by patentbar on August 22, 2008 · 10 comments

in Exam Questions

38. Which of the following can correct the inventorship of a patent application in
accordance with proper USPTO practice and procedure?
(A) An unexecuted nonprovisional application was filed January 3, 2001
naming Jones and Smith as inventors. Smith was named an inventor in
error. A Notice to File Missing Parts of Application was mailed by the
Office, that requested a surcharge and an executed oath or declaration
under 37 CFR 1.63 by Jones and Smith. A registered practitioner in
timely response to the Notice submitted the requested surcharge and a
declaration under 37 CFR 1.63 that named only Jones as the inventor,
which declaration was only executed by Jones. The registered practitioner
had determined that a request to correct inventorship under 37 CFR
1.48(a) was unnecessary. No papers were submitted, by Smith, clarifying
that she is not an inventor.
(B) A nonprovisional application was filed January 3, 2001 with a declaration
under 37 CFR 1.63 naming Jones and Smith as inventors, which
declaration was signed only by Jones. Smith was named an inventor in
error. A Notice to File Missing Parts of Application was mailed by the
Office that requested a surcharge and an executed oath or declaration by
Smith. A registered practitioner timely responded to the Notice by
submitting the requested surcharge and a new declaration under 37 CFR
1.63 that identified Jones as the sole inventor, which declaration was
executed only by Jones.
(C) A nonprovisional application was filed February 28, 2000 that improperly
named Jones as the sole inventor in a declaration under 37 CFR 1.63.
Only Jones executed the declaration. Applicant need only re- file the
application as a continued prosecution application naming the correct
inventorship of Jones and Smith in the new application’s transmittal letter.
(D) A continuation application was filed under 37 CFR 1.53(b) using a copy
of an executed declaration from the prior application for which a
continuation was filed to correct the inventorship. The continuation
application papers were accompanied by a request by a registered
practitioner, in the continuation application transmittal paper, that Smith,
named as an inventor in the prior application, be deleted as an inventor in
the continuation application.
(E) (A) and (D).

38. C is obviously wrong since it is a CPA and not a 53(b) filing. B is wrong since
the PTO will presume Jones signed on behalf of Smith, even though Smith’s
signature is missing. A and D are okay.

{ 10 comments… read them below or add one }

1 Art WilliamsNo Gravatar September 23, 2009 at 2:36 pm

That answer “D” is acceptable is counter intuitive for me, as I understand it to imply that an an inventor can be removed without his knowledge and signature. Is this right?

Thanks very much, Art Williams

Reply

2 AparnaNo Gravatar September 29, 2009 at 9:33 am

After you file a continuing application, you can request that an inventor be deleted. See MPEP 201.03:
Where the name of an inventor(s) is to be deleted, applicant can file a *>continuation or divisional(using a copy of the executed oath or declaration from the parent application)See 37 CFR 1.63(d)(2). If a continuing application is filed with a new executed oath or declaration properly naming the correct inventors, a request for deletion of the name(s) of the person(s) who are not inventors in the continuing application is not necessary.<
Hope this helps!

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3 sethzNo Gravatar February 3, 2010 at 2:24 pm

201.03 (E8R4)
In filing the continuing application under 37 CFR 1.53(b), a copy of an oath or declaration from the prior application can only be used where inventors are to be deleted (37 CFR 1.53(b)(1) and 37 CFR 1.63(d)(1)(ii)), but not where inventors are to be added. Where inventors are to be added, a newly executed oath or declaration must be submitted. See 37 CFR 1.63(d)(5).

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4 mdavis68No Gravatar February 3, 2010 at 9:05 pm

Q) Smith and Jones (4.02.38p)

*Explanation:

(E), which includes answers (A) and (D), is the correct answer. Answer (A) is correct. Where an application is filed identifying the inventorship but an executed declaration under 37 C.F.R. § 1.63 has not been filed, the first submission of an executed declaration under 37 C.F.R. § 1.63 will automatically act to correct the earlier identification of the inventorship. 37 C.F.R. § 1.48(f)(1). Answer (D) is correct. A continuation using a copy of a declaration under 37 C.F.R. § 1.63 from a prior application may be filed naming fewer than all the named inventors in the prior application provided a request for deletion of an inventor accompanies the declaration copy. 37 C.F.R. § 1.53(b)(1), 37 C.F.R. § 1.63(d)(1)(iv), and 1.63(d)(2). Answer (B) is incorrect. Where a declaration under 37 C.F.R. § 1.63, signed by at least one of the inventors, has been submitted to the Office, submission of a second executed declaration under 37 C.F.R. § 1.63 setting forth a different inventive entity will not act to correct the inventorship absent a petition under 37 C.F.R. § 1.48(a). 37 C.F.R. § 1.48(f)(1). Answer (C) is incorrect. Inventorship cannot by corrected by adding an inventor through the filing of a continued prosecution application, rather a petition under 37 C.F.R. § 1.48 is required. 37 C.F.R. § 1.53(d)(4).

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5 newtopatentbarNo Gravatar May 29, 2010 at 8:21 pm

For answer D, wasn’t the practitioner supposed to pay a fee set forth in § 1.17(i)? I chose A because I thought D should have included a fee to be perfectly correct. Can somebody help me out here? Thanks

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6 SNo Gravatar May 29, 2010 at 8:46 pm

I would go with A, just because it fulfills the requirement of 1.48(f) without ant hitches. However, I don’t see any fee requirements for D.

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7 newtopatentbarNo Gravatar May 29, 2010 at 10:49 pm

Well, the USPTO answer is E. The fee requirement is from 1.48 (b).

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8 SNo Gravatar May 30, 2010 at 7:45 am

Yep! My apologizes. The answer is E.

As for D, like I said earlier, there is no mention of the fee. But instead the relevant portion of the MPEP (apart from 1.53/1.63)

291.03:

Correction of inventorship may also be obtained by the filing of a continuing application under 37 CFR
1.53 without the need for filing a request under 37 CFR 1.48, either in the application containing the inventorship error (to be abandoned) or in the continuing application. The continuing application must be filed with the correct inventorship named therein. The filing of a continuing application to correct the inventorship is appropriate if at least one of the correct inventors has been named in the prior application (35 U.S.C. 120 and 37 CFR 1.78(a)(1)). That is, at least one of the correct inventors must be named in the executed oath or declaration filed in the prior application, or where no executed oath or declaration has been submitted in the prior application, the name of at least one correct inventor must be set forth in the application papers pursuant to 37 CFR 1.41(a)(1). Where the name of at least one inventor is to be added, correction of inventorship can be accomplished by filing a continuing application under 37 CFR 1.53(b) with a newly executed oath or declaration under 37 CFR 1.63(a). Where the name of an inventor(s) is to be deleted, applicant can file a continuing application with a request for deletion of the name of the inventor(s). The continuing application may be filed under 37 CFR 1.53(b) or, if the application is for a design patent, under 37 CFR 1.53(d).

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9 fengyuwuzuNo Gravatar October 11, 2011 at 1:57 pm

it is 201.03 not 209.03

10 youngNo Gravatar May 15, 2016 at 2:05 pm

As evidenced in 37 CFR 1.48, the correction of inventorship is a matter of “timing” & “oath or declaration.”

As to timing, if the correction is made after an establishment of inventorship or a first Office Action, then it must be accompanied by a fee. In the question above, a new application is filed with the request to change the inventorship, so we can say the request predates an establishment of inventorship in the new application. So, no fee is required.

Regarding the “oath or declaration,” there was a copy of previously filed oath or declaration, which is executed by the correct inventor. So, even if the declaration was executed also by an extra person, we can say that the correct inventor’s declaration is in the file. So, no problem in that as well.

Above is purely my personal hack on the question.

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