Q) Inventor Refused to Sign (10.03.12a)

by admin on April 8, 2010 · 3 comments

in Exam Questions

Test takers report a variation of question #12 from the October 2003 (AM) patent bar exam is in the Prometric database.

12. Inventors B and C are employed by Corporation D, which authorized registered practitioner E to prepare and file a patent application claiming subject matter invented by B and C. Inventor B signed the oath, an assignment to Corporation D, and a power of attorney authorizing practitioner E to prosecute the application. Inventor C refused to sign the oath and any assignment documents for the application. The employment contract between inventor C and Corporation D contains no language obligating C to assign any invention to Corporation D. A patent application was properly filed in the USPTO under 37 CFR 1.47 naming B and C as inventors, but without inventor C signing the oath. C has now started his own company competing with Corporation D producing a product with the invention in the application. Inventor B is a friend of inventor C and wants C to have continued access to the application. Which of the following statements is in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) Inventor C, who has not signed the oath or declaration, may revoke the power of attorney to practitioner E and appoint practitioner F to prosecute the application.
(B) Inventor C cannot be excluded from access t the application because inventor B has not agreed to exclude inventor C. In order to exclude a co-inventor from access to an application, all the remaining inventors must agree to exclude that coinventor.
(C) Inasmuch as one of the named joint inventors has not assigned his or her rights to Corporation D, the corporation is not an assignee of the entire right and interest, and therefore cannot exclude inventor C from access to the application.
(D) An inventor who did not sign the oath or declaration filed in an application can always be excluded from access to an application.
(E) An assignee filing an application can control access to an application and exclude inventors who have not assigned their rights and other assignees from inspecting the application.

ANSWER: (C) is the most correct answer. MPEP § 106 states “[t]he assignee of record of the entire interest in an application may intervene in the prosecution of the application, appointing an attorney or agent of his or her own choice. See 37 CFR § 3.71. Such intervention, however, does not exclude the applicant from access to the application to see that it is being prosecuted properly, unless the assignee makes specific request to that effect.” (A), (B), (D), and (E) are incorrect. MPEP § 409.03(i) is directly contrary to answer (A), and provides that a nonsigning inventor cannot revoke or give a power of attorney without agreement of all named inventors or the 37 CFR § 1.47(b) applicant. (B) is incorrect. MPEP § 106 does not empower an inventor who has assigned his or her rights to exclude a non-signing joint inventor from accessing an application in which the latter party is named as a joint inventor. (E) is incorrect. MPEP § 106. Corporation D, as an assignee of a part interest, cannot exclude the non-signing joint inventor from access to the application. See also, MPEP § 106.01, which states “While it is only the assignee of record of the entire interest who can intervene in the prosecution of an application or interference to the exclusion of the applicant, an assignee of a part interest or a licensee of exclusive right is entitled to inspect the application.” (D) is incorrect because MPEP § 409.03(i) states that a nonsigning inventor is entitled to inspect any papers in the application, and order copies at the price set forth in 37 C FR § 1.19.

1 RockyvxiiNo Gravatar January 11, 2012 at 3:49 pm

I had this question on Nov. 13, 2011 exam.

2 IndiJonesNo Gravatar June 30, 2012 at 2:08 am

I got a version of this on 6/29/12. A and B invents something and assigns it to company. Patent is issued. later the patent practitioner finds out that C and D should be inventors too. A is OK with adding C and D. B is fired from the company, believes that D should not be an inventor and refuses to sign any document regarding change in inventorship. what should the patent practitioner do? the answer I chose mentioned filing a reissue to change inventorship, with assignee signing. not sure though…

3 IlbeNo Gravatar February 5, 2013 at 12:05 pm

I had a different approach to this, but the same answer.

409.03(i) Rights of the Nonsigning Inventor
The nonsigning inventor (also referred to as an “inventor designee”) may protest his or her designation as an inventor.

U.S. Patent and Trademark Office will grant the nonsigning inventor access to the application

The rights of a nonsigning inventor are protected by the fact that the patent resulting from an application filed under 37 CFR 1.47(b) and 35 U.S.C. 118 must issue to the inventor, and in an application filed under 37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has the same rights that he or she would have if he or she had joined in the application. In re Hough, 108 USPQ 89 (Comm’r Pat. 1955).

I really don’t see how one can come up with a conclusion that a nonsigning inventor would result in partial ownership from 106.

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