Under 37 CFR 1.41(a) an application must include, or be amended to include, the name of the inventor for any invention claimed in the application. Once inventorship is established, it should be reviewed during prosecution, both for accuracy and because sometimes the prosecution of an application results in the need to add or delete one or more inventors. 35 U.S.C. 116, which is implemented by 37 CFR 1.48, allows for correction of inventorship.
For a Non-Provisional application, 37 CFR 1.48 requires the applicant to submit:
(1) a request, signed by a party set forth in 37 CFR 1.33(b), to correct the inventorship
(2) the fee set forth in 37 CFR 1.17(q); and
(3) a corrected application data sheet (ADS) which identifies the information being changed with underlining for insertions and strike-through or brackets for text removed.
With the exception of removing inventors due solely to the cancellation of claims, an additional fee is required if an Office action on the merits has been issued.
For a Provisional application, 37 CFR 1.48(d) requires the applicant to submit:
(1) a request, signed by a party set forth in 37 CFR 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and
(2) the fee set forth in 37 CFR 1.17(q).
The New PTO Form
On February 22, 2018, the Patent Office made available a new patent form to use when correcting the inventorship of a pending application. Separated into sections for Non-Provisional and Provisional applications, new form AIA/40 streamlines the process for requesting a correction, and offers clear guidance on what is required with each submission.
For a Non-Provisional application, option one is to correct or change the inventorship and option two should be selected when only updating the name or order of the inventors. Based on the type of request selected, reminders for each of the remaining requirements are helpfully listed, with fillable check boxes and spaces to enter fee amounts.
For a Provisional application, the process is the same to change or correct the inventorship as to correct the name or order of the inventors. Again, check boxes detail the remaining requirements.
The Fee Payment section should also be completed, specifying the entity size, deposit account information, and method of payment. Once completed, the form can be filed electronically or mailed to the address provided.
More information about requests under 37 CFR 1.48 can be found in the Manual of Patent Examining Procedure (MPEP) section 602.01(c).
