Q) Correcting the Name of the Inventor (10.03.18p)

by admin on April 13, 2010 · 13 comments

in Exam Questions

Recent test takers report that question #18 from the October 2003 (PM) test is in the patent bar exam database.

18. A registered practitioner filed a design patent application on December 30, 2003. The application was filed with an inventor-executed declaration naming Jon Jones as the sole inventor, who has not assigned the invention and is not under an obligation to assign his invention. The filing receipt was recently received, indicating that the application will be published on Thursday, July 1, 2004. In reviewing the filing receipt the practitioner realizes that the typed name of the inventor contained a typographical error (an “h” was missing) and that the correct spelling was John Jones. Which of the following would be the course of action at the least expense to correct the error in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) The practitioner should file a request under 37 CFR 1.48 to correct the inventorship of the application with a new declaration under 37 CFR 1.63 signed by John Jones (with the correct spelling of this name), a statement by Mr. Jones as to how the error occurred and that the error was without deceptive intention, and the processing fee set forth in 37 CFR 1.17(q).
(B) The practitioner should file a petition under 37 CFR 1.182 and the petition fee set forth in 37 CFR 1.17(h), requesting correction of the spelling of the inventor’s name.
(C) The practitioner should file a request for a corrected filing receipt and a separate letter to the Office explaining that the declaration contains a typographical error, that the correct spelling of the inventor’s name is John Jones, and requesting correction of the Office records.
(D) The practitioner should expressly abandon the application, and file a continuation with a new declaration with the correct spelling.
(E) The practitioner should call the examiner and tell the examiner that the inventor’s name is wrong, and ask for the examiner to change the name on the declaration.


ANSWER: (C) is the most correct answer. See MPEP § 605.04(b), which states “Except for correction of a typographical or transliteration error in the spelling of an inventor’s name, a request to have the name changed to the signed version or any other corrections in the name of the inventor(s) will not be entertained…When a typographical or transliteration error in the spelling of an inventor’s name is discovered during pendency of an application, a petition is not required, nor is a new oath or declaration under 37 CFR 1.63 needed. The U.S.[PTO] should simply be notified of the error and reference to the notification paper will be made on the previously filed oath or declaration by the Office.” (A), (B) and (D) could result in the spelling of Jon’s name being corrected in USPTO records, but would do so at a higher cost to applicant,and therefore neither one is the most correct answer. Furthermore, (A) is also not correct in that if a request to add John Jones as an inventor was to be filed, another request (and fee) to delete Jon Jones would be required. (B) is wrong because a petition under 37 CFR § 1.182 is not required if the error in the name is a typographical error, and the facts specify that the error in the spelling of “John” as “Jon” is a typographical error. (D) is not correct because not only would filing a continuation create an additional expensive, but filing a new application could also delay examination. (E) is not correct because pursuant to 37 CFR § 1.2, business with the Office is to be conducted in writing, and, even more importantly, because “it is improper for anyone, including counsel, to alter, rewrite, or partly fill in any part of the application, including the oath or declaration, after execution of the oath or declaration by the applicant.” MPEP § 605.04(a).

{ 13 comments… read them below or add one }

1 BenNo Gravatar February 2, 2011 at 9:00 pm

I had a variation of this question today. Answer C was not not an option and the replacement answer didn’t seem right. If I remember correctly B ended up being the best option (or at least what I picked) at 50$ not a bad deal.

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2 9thNo Gravatar November 18, 2011 at 6:53 am

This answer seems out-dated to me. It would appear the new answer would be to file a new ADS per 605.04(b) from MPEP Ed.8, Rev 4.:

When a typographical or transliteration error in the spelling of an inventor’s name is discovered during pendency of an application, a petition is not required, nor is a new oath or declaration under 37 CFR 1.63 needed. However, applicants are strongly encouraged to use an application data sheet such that any patent to issue will reflect the correct spelling of the inventor’s name. Without an application data sheet with the corrected spelling, any patent to issue is less likely to reflect the correct spelling since the spelling of the inventor’s name is taken from the oath or declarati

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3 ENo Gravatar November 18, 2011 at 11:02 am

I agree with 9th, except don’t you mean MPEP Ed. 8, Rev. 8?

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4 SolNo Gravatar April 3, 2012 at 8:04 pm

NO, a notice is required to correct the record. ADS or sup ADS is a plus to make sure it is printed right.

…correction of a typographical or transliteration error in the spelling of an inventor’s name whereby all that is required is notification of the error to the Office, the Office strongly encourages the filing of an application data sheet or a supplemental application data sheet to correct a typographical or transliteration error in the spelling of an inventor’s name. A supplemental oath or declaration is not required.
If applicant merely files a statement notifying the Office of the typographical or transliteration error in the spelling of an inventor’s name without submitting an application data sheet or a supplemental application data sheet, any patent to issue is less likely to reflect the correct spelling since the spelling of the inventor’s name is taken from the oath or declaration, or any subsequently filed application data sheet.

5 peeJNo Gravatar May 29, 2012 at 4:13 pm

I disagree with Sol. The provisions quoted in the above answer explanation have been deleted from the current version of the MPEP. The current section, as amended, suggests only submitting an ADS to correct the inventor’s name in this scenario. The language suggesting that a notification needs to be sent to the PTO has been deleted.

6 PatentGrrlNo Gravatar July 4, 2012 at 8:23 am

I agree with Sol (here in particular and in general his/her reasoning seems spot on when he/she replies on this website).

Copied from the current MPEP 605.04(b):

When a typographical or transliteration error in the spelling of an inventor’s name is discovered during pendency of an application, a petition is not required, nor is a new oath or declaration under 37 CFR 1.63needed. However, applicants are strongly encouraged to use an application data sheet such that any patent to issue will reflect the correct spelling of the inventor’s name. Without an application data sheet with the corrected spelling, any patent to issue is less likely to reflect the correct spelling since the spelling of the inventor’s name is taken from the oath or declaration, or any subsequently filed application data sheet.

If the error is not detected until after the payment of the issue fee, because amendments are not permitted after the payment of the issue fee, either (A) the application must be withdrawn from issue under 37 CFR 1.313(c)(2) and a request to correct the spelling of the inventor’s name submitted with a request for continued examination (RCE) under 37 CFR 1.114, or (B) a certificate of correction must be filed after the patent issues requesting correction of the spelling of the inventor’s name.

7 MirandaNo Gravatar February 1, 2012 at 2:00 pm

Question- atty is about to mail a completed patent application when inventor at the last minute wants to add a small improvement (new matter). The atty revises the spec and claims to incorporate this. Why would this change require a supplemental oath/declaration be made prior to filing? Wouldn’t both oaths be identical? or is there a place on the oath that describes the invention in detail and thus would have to incorporate the change? or is the supplemental oath merely for ethical purposes?

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8 SolNo Gravatar April 3, 2012 at 8:08 pm

Because the inventor needs to certify he has reviewed the revised app, the final product, the app as-filed. Yes, Atty revised it according to the inventor’s instruction, but Atty still needs to show the inventor the final draft.

So the way to go is (if time does not permit waiting a new oath), file it without an oath and submit the oath later.

The old oatch can be shredded.

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9 SolNo Gravatar April 3, 2012 at 8:11 pm

not only for ethics, but also remember there is a date on the oath. The inventor signed on 4/1 to certify the 4/1 version, the oath does not cover a later revised 4/3 version. Yes, the text of the oaths may be exactly the same.

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10 TakingittomorrowNo Gravatar October 5, 2012 at 12:22 am

GOt this 9/21/12

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11 IlbeNo Gravatar February 6, 2013 at 2:50 am

I picked E at first because of what I saw on MPEP 201.03

201.03 Correction of Inventorship in an Application [R-5]
A request under 37 CFR 1.48 will not be required:
(B) Where a typographical or transliteration error in the spelling of an inventor’s name is discovered, the Office should simply be notified of the error. A new oath or declaration is not required. See MPEP § 605.04(g). Reference to the notification will be made on the previously filed oath or declaration;

Someone please tell me this is invalid.

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12 PersevereNo Gravatar February 6, 2013 at 6:09 pm

IIbe,
Thanks for citing to MPEP 201.03. It is spot on. Also spot on, consistently, is Sol above. I am trying to spot the past posters who are getting the analysis right, and sticking with their rationales as I try to make sense of this. BigBadVoodoo is another to pay attention to.

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13 mmmaryNo Gravatar May 26, 2015 at 10:04 am

E9_R-11.2013 Version, it is under 602.01(c), “Correction of Inventorship, Name of Inventor, and Order of Names in an Application [R-11.2013]”

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