12. Inventor A filed a patent application and assigned the entire interest in the application to his employer, MegaCorp. The application issued as a utility patent on July 9, 2002. In June 2004, MegaCorp’s management first learns that a second inventor, Inventor B, should have been named as a co-inventor with respect to at least one claim of the issued patent. There was no deceptive intent in failing to name Inventor B in the original application. Inventor A, who is unfamiliar with patent law and concepts of inventorship, incorrectly believes that he should be the sole named inventor on the patent, and refuses to cooperate with any effort by MegaCorp to change the named inventive entity. The issued patent contains no other error. In accordance with the Manual of Patent Examining Procedure, which of the following procedures is/are available for MegaCorp to seek correction of the named inventive entity without any agreement, cooperation or action from Inventor A?
(A) File, on or before July 9, 2004, a reissue application, made by MegaCorp only, that seeks to add Inventor B.
(B) File, after July 9, 2004, a reissue application, made by MegaCorp only, that seeks to add Inventor B.
(C) Request a Certificate of Correction to add Inventor B as a named inventor.
(D) Submit in the issued patent file: a Request for Correction of Inventorship Under the Provisions of 37 CFR 1.48 that sets forth the desired inventorship change; a statement by Inventor B that the error in inventorship occurred without deceptive intention on her part; an oath or declaration executed by Inventor B; all required fees; and the written consent of MegaCorp.
(E) A and B are each available procedures.
Variation of 12 (filing a reissue outside the two year limitation is fine if there is no broadening; just add inventor)…same concept tested.
12. ANSWER: The best choice is (E). See MPEP § 1412.04. Reissue is a proper vehicle for correcting inventorship in a patent. Because correction of inventorship does not enlarge the scope of the patent claims, the reissue application may be filed more than two years after the patent issued. Answers (A) and (B) are therefore both correct, and (E) is the best response. Although a certificate of correction may be used to correct inventorship where all parties are in agreement, the facts of the question show that Inventor A is not in agreement. Choice (C) is thus not an available option for MegaCorp. Choice (D) is incorrect because the provisions of 37 C.F.R. § 1.48 are not available to correct inventorship in an issued patent.
Saw one similar to this yesterday. I think only one option included filing a reissue on behalf of the assignee (which I chose). The rest of the options were Certificate of Correction/using 1.48/and something else.
While correction on an issued patent can be made under 1.324, in this case it isi not possible because A is not in agreement.
The following is required for correction
(1)Where one or more persons are being added, a statement from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on his or her part;
(2)A statement from the current named inventors who have not submitted a statement under paragraph (b)(1) of this section either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change;
(3)A statement from all assignees of the parties
submitting a statement under paragraphs (b)(1) and (b)(2) of this section agreeing to the change of inventorship in the patent, which statement must comply
with the requirements of § 3.73(b) of this chapter; and
(4)The fee set forth in § 1.20(b).
This question is a little confusing, I think particularly because of the AIA.
For example, if an Applicant files to correct inventorship under 1.48, then the office will AUTOMATICALLY change the 1.48 request to a request to correct inventorship petition under 1.324 (See reproduced MPEP section below), thus, answer D above becomes quite appealing. In this light, (A) and (B) above becomes LESS appealing because there is no statement that MegaCorp is also submitting the required oath and declaration by Inventor B; thus making answer (D) the more correct and accurate answer.
See below for the 1.48 section I was referring to (MPEP 1481.02):
While a request under 37 CFR 1.48 is appropriate to correct inventorship in a nonprovisional application, a petition under 37 CFR 1.324 is the appropriate vehicle to correct inventorship in a patent. If a request under 37 CFR 1.48 is inadvertently filed in a patent, the request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set forth in subsection III., below should be used.
Similarly, if a request under 37 CFR 1.48(a), (b), or (c) is filed in a pending application but not acted upon until after the application becomes a patent, the request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set forth below should be used.
Thanks.
Please excuse my above answer, Section 1.324 requires agreement among all inventors, which we do not have in the above facts, which is why my reasoning above is wrong.
Thus, since we do not have agreement among all inventors in regards to the correction of inventorship, we must file pursuant to Section 1.175 in a Reissue application.
I hope my reasoning and logic above helps someone at least.