Q) Signing Inventors (4.02.44a)

by patentbar on September 4, 2008 · 7 comments

44. An amendment filed in January 8, 2002, in an unassigned nonprovisional
application seeks to cancel claims so that fewer than all of the currently named inventors
are the actual inventors of the invention being claimed. The amendment includes a
request to delete the names of the persons who are not inventors. In accordance with
proper USPTO rules and procedure, the request may be signed by which of the
following?

(A) A registered practitioner not of record who acts in a representative
capacity under 37 CFR 1.34(a).
(B) All of the applicants (37 CFR 1.41(b)) for patent.
(C) A registered practitioner of record appointed pursuant to 37 CFR 1.34(b).
(D) (B) and (C).
(E) (A), (B), and (C).

44. ANSWER: (E) is the correct answer. 37 C.F.R. § 1.48(b) (effective November 7, 2000);
“Changes To Implement the Patent Business Goals; Final Rule,” 65 FR 54604, 54619
(September 8, 2000). As stated in 65 FR at 54619, middle column, “Sections 1.48(b) and (d) are
revised to indicate that a request to correct the inventorship thereunder must be signed by a party
as set forth in § 1.33(b)…” (A), (B), and (C) are provided for in 37 C.F.R. § 1.33(b). Thus (E),
the most inclusive answer, is correct.

1 Sean April 18, 2009 at 2:21 pm

Where is this in the MPEP? I cannot find it.

2 triedandtested July 20, 2009 at 5:09 pm: See the 37 Code of Federal Regulations (or see “Rules” at the back of MPEP)

3 Lizzie April 18, 2009 at 2:48 pm

37 C.F.R. § 1.48(b):
Amendment of the inventorship requires:
1- A request, signed by a party set forth in § 1.33(b)

37 C.F.R. § 1.33(b):
Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application must be signed by:
(1) A registered patent attorney or patent agent of record appointed in compliance with § 1.32(b);
(2) A registered patent attorney or patent agent not of record who acts in a representative capacity under the provisions of § 1.34;
(3) An assignee as provided for under § 3.71(b) of this chapter; or
(4) All of the applicants (§ 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.

4 triedandtested June 10, 2009 at 7:56 pm

To answer Sean’s question in another way, look under “Rules” at the back of MPEP (in the Index) and you will find MPEP sections where a particular rule is mentioned.

5 S March 24, 2010 at 3:15 pm

I know that I have to look in 37 CFR 1.48 for the answer to this. But can somebody explain this to me,Pl?

Changes To Implement the Patent Business Goals; Final Rule,” 65 FR 54604, 54619
(September 8, 2000). As stated in 65 FR at 54619, middle column, “Sections 1.48(b) and (d) are…………..

Where would these “changes to implement the Patent Business Goals” be…..in the MPEP?

Thank you

6 qwacker October 26, 2011 at 10:20 pm