2157 Improper Naming of Inventors [R-01.2024]
Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent laws still require the naming of the inventor of the claimed subject matter. See 35 U.S.C. 115(a) (“[a]n application for patent that is filed under [35 U.S.C.] 111(a) or commences the national stage under [35 U.S.C.] 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application”). The Office generally presumes that the named inventor in the application is the actual inventor to be named on the patent. See MPEP § 2109. However, see the examples in MPEP §§ 2155.01 and 2155.02 regarding the need to establish inventorship on the record in connection with an affidavit or declaration under 37 CFR 1.130. A situation in which an application names a person who is not the actual inventor or a joint inventor as the inventor or a joint inventor will be handled in a derivation proceeding under 35 U.S.C. 135 (see MPEP §§ 2310-2315), by a correction of inventorship under 37 CFR 1.48, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115, as appropriate.
Where an application names an incorrect inventorship, the applicant should submit a request to correct inventorship under 37 CFR 1.48. See MPEP § 602.01(c) et seq. In the rare situation where it is clear that the application does not name the correct inventorship and the applicant has not filed a request to correct inventorship under 37 CFR 1.48, Office personnel should reject the claims under 35 U.S.C. 101 and 35 U.S.C. 115.
Use Form Paragraph 7.04.02.aia to reject claims under 35 U.S.C. 101 and 115 for failing to set forth the correct inventorship.
¶ 7.04.101.aia Statement of Statutory Bases, 35 U.S.C. 101 and 35 U.S.C. 115— Improper Inventorship
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 115(a) reads as follows (in part):
An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.
The present application sets forth the incorrect inventorship because [1].
Examiner Note:
- 1. If form paragraph 7.04.01 is already being used for a rejection that is not based on improper inventorship, then in lieu of this form paragraph, use form paragraph 7.04.102.aia with form paragraph 7.04.01 for a rejection based on improper inventorship.
- 2. In bracket 1, insert the basis for concluding that the inventorship is incorrect.
- 3. This form paragraph must be followed by form paragraph 7.04.02.aia.
¶ 7.04.102.aia Statement of Statutory Basis, 35 U.S.C. 115— Improper Inventorship
35 U.S.C. 115(a) reads as follows (in part):
An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.
The present application sets forth the incorrect inventorship because [1].
Examiner Note:
- 1. This form paragraph is to be used ONLY when a rejection under 35 U.S.C. 101 on another basis has been made and the statutory text thereof is already present.
- 2. This form paragraph must be preceded by form paragraph 7.04.01 for a rejection based on improper inventorship.
- 3. In bracket 1, insert an explanation of the supporting evidence establishing that an improper inventor is named.
¶ 7.04.02.aia Rejection, 35 U.S.C. 101/115
Claim [1] rejected under 35 U.S.C. 101 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.
Examiner Note:
- 1. In bracket 1, pluralize “Claim” if necessary, insert “is” or “are” as appropriate, and insert the claim number(s) which are under rejection.
- 2. This rejection must be preceded by either form paragraph 7.04.101.aia or 7.04.102.aia.
Note that a rejection under pre-AIA 35 U.S.C. 102(f) should not be made if the application is subject to examination under the first inventor to file (FITF) provisions of the AIA. See MPEP § 2159et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2137 for information pertaining to pre-AIA 35 U.S.C. 102(f).
