1481.01 Correction of Assignees’ Names [R-07.2022]

The Fee(s) Transmittal Form portion (PTOL-85B) of the Notice of Allowance provides a space (item 3) for assignment data which should be completed in order to comply with 37 CFR 3.81. Unless an assignee’s name and address are identified in the appropriate space for specifying the assignee, (i.e., item 3 of the Fee(s) Transmittal Form PTOL-85B), the patent will issue to the applicant. Providing assignee information on the form PTOL-85B will result in identification of the assignee in the assignee field of the issued patent, but will not affect any change in the applicant of record. If the assignee is not the applicant of record, then an appropriate request under 37 CFR 1.46(c) must be filed before or with the payment of the issue fee for the patent to reflect the assignee as both the applicant and the assignee. Assignment data printed on the patent will be based solely on the information so supplied on the form PTOL-85B.

I. AFTER PAYMENT OF ISSUE FEE OR ISSUANCE OF A PATENT

Any request for the issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee must:

• (A) state that the assignment was submitted for recordation as set forth in 37 CFR 3.11 before issuance of the patent;
• (B) include a request for a certificate of correction under 37 CFR 1.323 along with the fee set forth in 37 CFR 1.20(a); and
• (C) include the processing fee set forth in 37 CFR 1.17(i).

See 37 CFR 3.81(b).

Request to add or change the assignee information which does not comply with 37 CFR 3.81(b) will not be granted. Mistakenly adding assignee information on the form PTOL-85B is not a type of error correctable via certificate of correction.

1481.02 Correction of Named Inventor [R-07.2022]

35 U.S.C. 256 permits the Director to issue a certificate correcting the inventors named in a patent; 37 CFR 1.324 provides the criteria for requests to correct inventorship in a patent. Pre-AIA 35 U.S.C. 256 requires that any error to be corrected must have been made “without deceptive intention.” Effective September 16, 2012, Public Law 112-29, sec. 20, 125 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended 35 U.S.C. 256 to eliminate the “without deceptive intention” clause. See subsection I, below, for the requirements of a petition filed on or after September 16, 2012 to correct inventorship in a patent, and subsection II, below, for the requirements of such a petition filed before September 16, 2012.

While 35 U.S.C. 256 was amended to remove the requirement that the error was made “without deceptive intention,” practitioners still have a duty to conduct a reasonable inquiry to name the actual inventors in a patent application. Specifically, 35 U.S.C. 115(i) requires that any declaration or statement filed pursuant to 35 U.S.C. 115 must contain an acknowledgement that any willful false statement made in the declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both. Similarly, in naming inventors in an application data sheet, a provisional cover sheet or another paper, the person signing the papers is making a certification under 37 CFR 11.18(b), including a certification that all statements made in the papers are believed to be true. See 37 CFR 1.4(d)(4).

In Egenera, Inc. v Cisco Sys., Inc., 972 F.3d 1367, 2020 USPQ2d 10997 (Fed. Cir. 2020), the court found that the patent owner was not judicially estopped from adding an inventor back to the patent when the patent owner removed that inventor during an early Office proceeding involving the patent. Specifically, the patent owner submitted a petition to remove an inventor due to claim construction advanced in an Office proceeding and that inventor was removed from the patent by the Office as a matter of formality by the “ministerial” 35 U.S.C. 256 process. In a related court proceeding, a different claim construction construing “logic to modify” as a means plus function limitation was adopted by the district court and affirmed on appeal. As a result of the different claim interpretation in the court decisions, the patent owner appropriately requested that the deleted inventor be added back to the patent.

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.

The statutory basis for correction of inventorship in a patent under 37 CFR 1.324 is 35 U.S.C. 256. It is important to recognize that 35 U.S.C. 256 is stricter than 35 U.S.C. 116, the statutory basis for corrections of inventorship in applications under 37 CFR 1.48. 35 U.S.C. 256 requires “on application of all the parties and assignees,” while 35 U.S.C. 116 does not have the same requirement. Correction of inventorship in a patent under 37 CFR 1.324 requires petition of all the parties, i.e., originally named inventors and assignees, in accordance with statute (35 U.S.C. 256) and thus the requirement cannot be waived.

Where applicant’s typographical error in an inventor’s name is recognized after the patent issues, a certificate of correction under 37 CFR 1.323, the fee set forth in 37 CFR 1.20(a), a petition under 37 CFR 1.182, and the petition fee set forth in 37 CFR 1.17(f) must be filed to request correction of the typographical error in the inventor’s name.

Where an inventor changes their name, including a legal name change, after the patent issues, a certificate of correction cannot be filed to effect the name change in the patent. An inventor name change after a patent issues is neither a “mistake of a clerical or typographical nature, or of minor character” in accordance with 35 U.S.C. 255, nor a mistake that “is clearly disclosed by the records of the Office” in accordance with 35 U.S.C. 254. Additionally, an inventor name change, including a legal name change, after the patent issues is not a correction of inventorship under 35 U.S.C. 256.

Similarly, where an inventor changes their name, including a legal name change, prior to issuance of the patent but did not correct their name while the patent application was pending, a certificate of correction cannot be filed to effect the inventor name change in the patent because the name of the inventor was correct at the time of filing the application and was not changed during the pendency of the application. Submitting a request for correction of inventorship under 35 U.S.C. 256 due to an inventor that changed their legal name is inappropriate.

All requests to make a correction of a named inventor should include the certificate of correction form (PTO/SB/44). If the completed form is not provided, the name of the inventors along with their residence information is required for the Office to print the certificate of correction.

I. REQUEST FILED ON OR AFTER SEPTEMBER 16, 2012, TO CORRECT NAMED INVENTOR

[Editor Note: See subsection II below, for requests filed before September 16, 2012.]

In requesting the Office to effectuate a court order correcting inventorship in a patent pursuant to 35 U.S.C. 256, a copy of the court order and a certificate of correction under 37 CFR 1.323 must be submitted to the Certificates of Correction Branch. In addition, form PTO/SB/44 should be filed.

A petition filed on or after September 16, 2012 to correct the inventorship in a patent must be accompanied by all of the following:

• (1) A statement from each person who is being added as an inventor and each person who is currently named as an inventor. Each inventor statement must either agree to the change of inventorship or state that the inventor has no disagreement in regard to the requested change. See 37 CFR 1.324(b)(1).
• (2) A statement is required from the assignee(s) of the parties submitting a statement under 37 CFR 1.324(b)(1) agreeing to the change of inventorship in the patent, which statement must comply with the requirements of 37 CFR 3.73(c). See 37 CFR 1.324(b)(2). See MPEP § 325 as to the requirements of a statement under 37 CFR 3.73(c). A statement is required by each entity having an ownership interest in the patent.
• (3) The fee set forth in 37 CFR 1.20(b).

If an inventor is not available, or refuses, to submit a statement, the assignee of the patent may wish to consider filing a reissue application to correct inventorship, because the inventor’s statement is not required for a non-broadening reissue application to correct inventorship. See MPEP § 1412.04.

For correction of inventorship in a patent in an interference under 37 CFR part 41, subpart D, 37 CFR 1.324(d) provides that a request for correction of inventorship must be in the form of a motion under 37 CFR 41.121(a)(2). For correction of inventorship in a contested case under 37 CFR part 42, subpart D, 37 CFR 1.324(d) provides that a request for correction of inventorship in a patent must be in the form of a motion under 37 CFR 42.22. 37 CFR 1.324(d) further provides that the motion made under 37 CFR 41.121(a)(2) or 42.22 must comply with the requirements of 37 CFR 1.324.

II. REQUEST FILED BEFORE SEPTEMBER 16, 2012, TO CORRECT NAMED INVENTOR

[Editor Note: See subsection I above, for requests filed on or after September 16, 2012.]

In requesting the Office to effectuate a court order correcting inventorship in a patent pursuant to 35 U.S.C. 256, a copy of the court order and a certificate of correction under 37 CFR 1.323 must be submitted to the Certificates of Correction Branch. A petition filed before September 16, 2012 to correct the inventorship in a patent must comply with the requirements of pre-AIA 37 CFR 1.324, and must include the statements and fee required by pre-AIA 37 CFR 1.324(b).

Under pre-AIA 37 CFR 1.324(b)(1), a statement is required from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on their part. In order to satisfy this, a statement such as the following is sufficient:

“The inventorship error of failing to include John Smith as an inventor of the patent occurred without any deceptive intention on the part of John Smith.”

Nothing more is required. The examiner will determine only whether the statement contains the required language; the examiner will not make any comment as to whether or not it appears that there was in fact deceptive intention (see MPEP § 2012).

Under pre-AIA 37 CFR 1.324(b)(2), all current inventors who did not submit a statement under pre-AIA 37 CFR 1.324(b)(1) must submit a statement either agreeing to the change of inventorship, or stating that they have no disagreement with regard to the requested change. “Current inventors” include the inventor(s) being retained as such and the inventor(s) to be deleted. These current inventors need not make a statement as to whether the inventorship error occurred without deceptive intention. If an inventor is not available, or refuses, to submit a statement, the assignee of the patent may wish to consider filing a reissue application to correct inventorship, because the inventor’s statement is not required for a non-broadening reissue application to correct inventorship. See MPEP § 1412.04.

Under pre-AIA 37 CFR 1.324(b)(2), a statement is required from the assignee(s) of the patent agreeing to the change of inventorship in the patent. The assignee statement agreeing to the change of inventorship must be accompanied by a proper statement under pre-AIA 37 CFR 3.73(b) establishing ownership, unless such a proper statement is already in the file. See MPEP § 324 as to the requirements of a statement under pre-AIA 37 CFR 3.73(b).

III. PETITION UNDER 37 CFR 1.324

Correction of inventorship requests under 37 CFR 1.324 should be directed to the Supervisory Patent Examiner (SPE) whose unit handles the subject matter of the patent. The SPE may use Form PTOL-306 to respond to the request under 37 CFR 1.324. Alternatively, form paragraphs 10.13 through 10.18 may be used.

1481.03 Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits [R-07.2022]

I. CORRECTION TO PERFECT CLAIM FOR 35 U.S.C. 119 (a)-(d) AND (f) BENEFITS

See MPEP § 216.01 for a discussion of when 35 U.S.C. 119(a)-(d) and (f) benefits can be perfected by certificate of correction.

II. CORRECTION AS TO 35 U.S.C. 120 AND 35 U.S.C. 119(e) BENEFITS

Title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA) amended 35 U.S.C. 119(e)(1) to provide that:

No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.

Specifically, 35 U.S.C. 119(e)(1) is effective for all patents whenever granted and no longer requires that the amendment containing the specific reference to the earlier-filed provisional application be submitted during the pendency of the application. Thus, the prior prohibition on granting certificates of correction to add or correct a claim for the benefit of a prior provisional application no longer applies. A certificate of correction to add or correct a claim for the benefit of a prior provisional application under 35 U.S.C. 119(e) may now be available under certain conditions. See subsection A. entitled “Conditions for Certificate of Correction” below. In addition, effective May 13, 2015, 37 CFR 1.78(d)(3) was revised to make the procedures under 37 CFR 1.78(e) to accept an unintentionally delayed benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) applicable to design applications, and thus, accords applicants in design applications the same remedy that was only previously available to applicants in utility and plant applications. 37 CFR 1.78(d)(3)(i) provides that the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) must be submitted during the pendency of the later-filed application. For design applications, this time period is the only applicable time period for when the required reference must be submitted because the time period set forth in 37 CFR 1.78(d)(3)(ii) (i.e., four months from the filing date of the later-filed application or sixteen months from the filing date of the prior-filed application) does not apply to an application for a design patent. If the required reference to the prior-filed application is not submitted during the pendency of the later-filed design application, then a petition to accept an unintentionally delayed benefit claim under 37 CFR 1.78(e) may be filed. See 37 CFR 1.78(d)(3)(iii). Thus, a petition under 37 CFR 1.78(e) may be filed along with a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 in a design patent if the required reference to the prior-filed application was not submitted during the pendency of the later-filed design application.

Under certain conditions as specified below a certificate of correction can be used, with respect to a benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c), to correct:

• (A) the failure to make reference to a prior copending nonprovisional application, international application designating the United States, or international design application designating the United States pursuant to 37 CFR 1.78(d)(2);
• (B) an incorrect reference to a prior copending nonprovisional application, international application designating the United States, or international design application designating the United States pursuant to 37 CFR 1.78(d)(2);
• (C) the failure to make reference to a prior provisional application pursuant to 37 CFR 1.78(a)(3); or
• (D) an incorrect reference to a prior provisional application pursuant to 37 CFR 1.78(a)(3).

A. Conditions for Certificate of Correction

• 1. Where a benefit claim based upon 35 U.S.C. 120 to a national application is to be asserted or corrected in a patent via a certificate of correction, the following conditions must be satisfied:
  • (A) all requirements set forth in 37 CFR 1.78(d)(1) must have been met in the application which became the patent to be corrected;
  • (B) it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211et seq.); and
  • (C) a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78(e) must be filed, including the petition fee as set forth in 37 CFR 1.17(m). See MPEP § 211.04for a discussion of the requirements for the petition.
• 2. Where a benefit claim based upon 35 U.S.C. 120 and 365(c) to an international application, or 35 U.S.C. 120 and 386(c) to an international design application, is to be asserted or corrected in a patent via a certificate of correction, the following conditions must be satisfied:
  • (A) all requirements set forth in 37 CFR 1.78(d)(1) must have been met in the application which became the patent to be corrected;
  • (B) it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211et seq.);
  • (C) the patentee must submit together with the request for the certificate, copies of documentation showing designation of states and any other information needed to make it clear from the record that the 35 U.S.C. 120 priority is appropriate (see MPEP § 211et seq. as to the requirements for 35 U.S.C. 120 priority based on an international application or an international design application); and
  • (D) a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78(e) must be filed, including the petition fee as set forth in 37 CFR 1.17(m). See MPEP § 211.04for a discussion of the requirements for the petition.

  Benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon. See MPEP § 211.01(d).

  Where a benefit claim based upon 35 U.S.C. 120, 121, 365(c), or 386(c) is timely submitted, a petition under 37 CFR 1.78(e) is not required for correcting the benefit claim by changing the relationship of the applications (e.g., changing from “continuation” or “divisional” to “continuation-in-part” or from “continuation-in-part” to “continuation” or “divisional”) whether filed during the pendency of the later-filed application or after patent grant. See MPEP § 211.03. However, a change in the relationship may require comparing the disclosures of the applications which would require further examination and thus such a change would not be appropriate via a certificate of correction after patent grant. In addition, there is significance to the designation of the relationship as “continuation,” “divisional,” or “continuation-in-part.” For example, the safe harbor of 35 U.S.C. 121 only protects divisional applications, not continuation applications or continuation-in-part applications. See Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-08 (Fed. Cir. 2008) and Amgen v. Hoffman-La Roche, 580 F.3d 1340, 1352-1354, 92 USPQ2d 1289, 1298-1300 (Fed. Cir. 2009). Changing the relationship to or from a “divisional” has the potential to impact the applicability of the safe harbor provision or a nonstatutory double patenting rejection. Note that a patentee cannot obtain the safe harbor protection of 35 U.S.C. 121 against nonstatutory double patenting by amending a patent that issued from a continuation-in-part application to recite only subject matter disclosed in the parent application and changing the relationship to a divisional of the parent application. See In re Janssen Biotech, Inc., 880 F.3d 1315, 125 USPQ2d 1525, 1529 (Fed. Cir. 2018)( “[A] patent owner cannot retroactively bring its challenged patent within the scope of the safe-harbor provision by amendment in a reexamination proceeding.”); G.D. Searle LLC v. Lupin Pharm., Inc., 790 F.3d 1349, 1355, 115 USPQ2d 1326, 1330 (Fed. Cir. 2015)(“Simply deleting that new matter from the reissue patent does not retroactively alter the nature of the [CIP] application.”).

• 3. Where a benefit claim based upon 35 U.S.C. 119(e) to a prior provisional application is to be asserted or corrected in a patent via a certificate of correction, the following conditions must be satisfied:
  • A. all requirements set forth in 37 CFR 1.78(a)(1) and (a)(2) must have been met in the application which became the patent to be corrected;
  • B. it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211et seq.); and
  • C. a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78(c) must be filed, including the petition fee as set forth in 37 CFR 1.17(m). See MPEP § 211.04for a discussion of the requirements for the petition.

Except in certain situations, if all the above-stated conditions for benefit claims discussed in A.1-3 are satisfied, a certificate of correction can generally be used to amend the patent to make reference to a prior application, or to correct an incorrect reference to the prior application.

In situations where a petition under 37 CFR 1.78 is filed with a request for a certificate of correction under 35 U.S.C. 255 in an issued patent, the petition should not be granted where grant of the petition would require further examination. The following situations are examples of when further examination would be required: (1) where the grant of the petition would cause the patent to be subject to a different statutory framework, e.g., the addition of a benefit claim to a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA; (2) where the grant of the petition would result in the claim(s) in the patent having a later effective filing date and thus making available more potential prior art; and (3) where the grant of the petition would alter the continuity chain in a way that may impact patentability, e.g., the altered chain would require evaluation of whether the continuity of disclosure requirement is satisfied.

Furthermore, if the grant of the petition under 37 CFR 1.78, which is filed with a request for a certificate of correction under 35 U.S.C. 255, would have the appearance of extending the patent term, the petition should not be granted. For example, in an application that claims both domestic benefit and foreign priority, a change to a later filing date in the earliest application for which domestic benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) could have the appearance of extending the patent term, even though the effective filing date for the claimed invention would not change because the foreign priority date would not change. See 35 U.S.C. 100(i)(1). This is because a foreign priority date is taken into account in determining the effective filing date for a claimed invention under the first inventor to file (FITF) provisions of the AIA, but the foreign priority date is not taken into account in determining the term of a patent. The maximum term of the original patent is fixed at the time the patent is granted, subject to any adjustments to the number of days of extension or adjustment. In addition, 35 U.S.C. 255 states that the patent, together with the certificate of correction, shall have the same effect as if the patent originally issued in that corrected form. Therefore, a petition under 37 CFR 1.78 with a certificate of correction under 35 U.S.C. 255 should not be granted where grant of the petition would have the appearance of extending the patent term.

Exemplary situations where a petition under 37 CFR 1.78 with a certificate of correction may be appropriate:

• (A) Adding or correcting a claim to a prior application having a filing date before March 16, 2013 to a patent that was examined (as indicated on the notice of allowance or a later Office communication such as a supplemental Notice of Allowance) under the first to invent provisions of pre-AIA law.
• (B) Adding or correcting a claim to a prior application having a filing date before March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first inventor to file provisions of the AIA and where the 37 CFR 1.55/1.78 statement (see MPEP § 210, subsection III) is filed concurrently with the petition (since the presence of the statement would not result in a switch in the statutory framework).
• (C) Adding a claim to a prior application having a filing date on or after March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first to invent provisions of pre-AIA law.
• (D) Adding or correcting a claim to a prior application having a filing date on or after March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first inventor to file provisions of the AIA.

However, as discussed above, a petition under 37 CFR 1.78 with a certificate of correction under 35 U.S.C. 255 should not be granted where further examination would be required or the grant of the petition would have the appearance of extending the patent term.

Exemplary situations where a certificate of correction under 35 U.S.C. 255 may not be appropriate:

• (A) Adding or correcting a claim to a prior application having a filing date before March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first inventor to file provisions of the AIA and where the 37 CFR 1.55/1.78 statement is not present.
• (B) Correcting a claim to a prior application having a filing date before March 16, 2013 to a claim to a prior application having a filing date on or after March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first to invent provisions of pre-AIA law.
• (C) Correcting a claim to a prior application that would result in a later effective filing date for a claimed invention (even if it would not result in a change to the statutory framework under which the application was examined).
• (D) Correcting a claim to a prior application that would have the appearance of extending the patent term (even if it would not result in a later effective filing date for a claimed invention or a change to the statutory framework under which the application was examined).

If any of the above-stated conditions is not satisfied or if the correction sought would require further examination, the filing of a reissue application (see MPEP § 1401 - § 1460) may be appropriate to pursue the desired correction of the patent for benefit claims under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). It should be noted that a certificate of correction under 35 U.S.C. 255 cannot be used to remove a benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) because further examination would be required.

See MPEP § 216.01 for a discussion of when a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be perfected by certificate of correction.