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605    Applicant [R-11.2013]

Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor. See MPEP § 605.01 for information regarding the applicant in applications filed on or after September 16, 2012.

For applications filed before September 16, 2012, a person to whom the inventor assigned an invention could file and prosecute an application for patent, but the inventor is considered the applicant. See MPEP § 605.02 for information regarding the applicant in applications filed before September 16, 2012.

605.01   Applicant for Application filed on or after September 16, 2012 [R-11.2013]

[Editor Note: See MPEP § 605.02 for information regarding the applicant in applications filed before September 16, 2012.]

The owner or assignee of a patent property can take action in a patent application as the applicant. The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom in the absence of an assignment. 37 CFR 3.73. An assignee who is not the original applicant must become the applicant under 37 CFR 1.46 in order to request or take action in a patent application. See MPEP § 325.

I.   DEFINITION OF APPLICANT

37 C.F.R. 1.42  Applicant for patent.

  • (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.
  • (b) If a person is applying for a patent as provided in § 1.46, the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and not the inventor.
  • (c) If fewer than all joint inventors are applying for a patent as provided in § 1.45, the phrase "the applicant" means the joint inventors who are applying for the patent without the omitted inventor(s).
  • (d) Any person having authority may deliver an application and fees to the Office on behalf of the applicant. However, an oath or declaration, or substitute statement in lieu of an oath or declaration, may be executed only in accordance with § 1.63 or 1.64, a correspondence address may be provided only in accordance with § 1.33(a), and amendments and other papers must be signed in accordance with § 1.33(b).
  • (e) The Office may require additional information where there is a question concerning ownership or interest in an application, and a showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.

37 C.F.R. 1.43  Application for patent by a legal representative of a deceased or legally incapacitated inventor.

If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.

37 C.F.R. 1.45  Application for patent by joint inventors.

  • (a) Joint inventors must apply for a patent jointly, and each must make an inventor's oath or declaration as required by § 1.63, except as provided for in § 1.64. If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See § 1.64 concerning the execution of a substitute statement by the other joint inventor or inventors in lieu of an oath or declaration.
  • (b) Inventors may apply for a patent jointly even though:
    • (1) They did not physically work together or at the same time;
    • (2) Each inventor did not make the same type or amount of contribution; or
    • (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
  • (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.

37 C.F.R. 1.46  Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.

  • (a) A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
  • (b) If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. If the application is the national stage of an international application, the person who is identified in the international stage as an applicant for the United States is the person specified as the original applicant for the national stage.
    • (1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
    • (2) If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including:
      • (i) The fee set forth in § 1.17(g);
      • (ii) A showing that such person has sufficient proprietary interest in the matter; and
      • (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
  • (c) Any request to correct or update the name of the applicant after an applicant has been specified under paragraph (b) of this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7)). Any request to change the applicant after an original applicant has been specified under paragraph (b) of this section must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7)) and comply with §§ 3.71 and 3.73 of this title.
  • (d) Even if the whole or a part interest in the invention or in the patent to be issued is assigned or obligated to be assigned, an oath or declaration must be executed by the actual inventor or each actual joint inventor, except as provided for in § 1.64. See § 1.64 concerning the execution of a substitute statement by an assignee, person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter.
  • (e) If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81. Where a real party in interest has filed an application under § 1.46, the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest.
  • (f) The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette.

37 CFR 1.42 defines who is the applicant for a patent. The word “applicant” when used in title 37 refers to the inventor or all joint inventors, or to the person applying for a patent as provided in 37 CFR 1.43, 1.45, or 1.46. If a person is applying for a patent as provided in 37 CFR 1.46, the word “applicant” refers to the assignee, the person to whom the inventor is under an obligation to assign, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for the patent under 37 CFR 1.46 and not the inventor. If fewer than all joint inventors are applying for the patent as provided in 37 CFR 1.45, the phrase “the applicant” means the joint inventors who are applying for the patent without the omitted inventor(s).

37 CFR 1.43 provides that if an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. See also MPEP § 409.01(a).

37 CFR 1.45 pertains to an application filed by joint inventors. Joint inventors must apply for a patent jointly and each joint inventor must make the inventor’s oath or declaration required by 37 CFR 1.63, except as provided for in 37 CFR 1.64. See 35 U.S.C. 116(a) and 37 CFR 1.45(a). If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See 35 U.S.C. 116(b) and 37 CFR 1.45(a). See also MPEP § 409.02.

37 CFR 1.46 provides for the filing of an application for patent by an assignee, a person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter under 35 U.S.C. 118. If an application under 35 U.S.C. 111 is made by a person other than the inventor under 37 CFR 1.46(a), the application must contain an application data sheet under 37 CFR 1.76 specifying in the applicant information section the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter. While identifying the party making the application for patent (the applicant) in an application data sheet is not a filing date requirement, a delay in naming the applicant under 37 CFR 1.46 may cause it to appear that applicant is the inventor and thus requiring the party to file a request under 37 CFR 1.46(c) to become the applicant, which requires compliance with 37 CFR 3.71 and 3.73. See MPEP § 325. If an assignee is filing an application under 37 CFR 1.46, but the assignee is not the assignee of the entire right, title and interest in the application, then the assignee would need to be named as the applicant under 37 CFR 1.46 together with the other party who has an ownership interest. For example, if there are two joint inventors, and one inventor has assigned his rights in the invention to the assignee, but the other inventor has not assigned his rights in the invention and is under no obligation to assign his rights, the assignee and the other inventor should be identified as the applicant in the applicant information section of the application data sheet. See 37 CFR 3.71.

If the applicant is the assignee or person to whom the inventor is under an obligation to assign the invention, the documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) should be recorded as provided for in 37 CFR part 3 no later than the date the issue fee is paid. See 37 CFR 1.46(b)(1).

If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (1) the fee set forth in 37 CFR 1.17(g); (2) a showing that such person has sufficient proprietary interest in the matter; and (3) a statement that making the application for patent by a person who otherwise shows sufficient proprietary interest on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties. See 37 CFR 1.46(b)(2). A discussion of the evidence necessary for a showing that a person has sufficient proprietary interest in the matter is set forth in MPEP § 409.05. The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette. See 37 CFR 1.46(f).

Any request to correct or update the name of the applicant after an applicant has been specified under 37 CFR 1.46(b) must include an application data sheet under 37 CFR 1.76 specifying the correct or updated name of the applicant in in the applicant information section. See 37 CFR 1.46(c). Thus, if there is no change in the applicant itself but just the applicant’s name (due to a correction or name change), the applicant need only submit an application data sheet specifying the correct or updated name of the applicant in the applicant information section.

II.   CHANGE OF APPLICANT

Where no applicant is identified, the Office will, by default, consider the inventor to be the applicant (e.g., to complete processing of the application so that it can be forwarded for examination). Any request to change the applicant must include an application data sheet under 37 CFR 1.76 specifying the applicant in the applicant information section and must comply with 37 CFR 3.71 and 3.73. See 37 CFR 1.46(c). Thus, if there is a change of applicant under 37 CFR 1.46 (e.g., from the inventor to the assignee, or from one assignee to another assignee), the new applicant must establish its ownership of the application under 37 CFR 3.71(b) and 3.73.

37 CFR 1.46(e) provides that if a patent is granted on an application filed under 37 CFR 1.46 by a person other than the inventor, the patent shall be granted to the real party in interest (e.g., the current assignee for an application that has been assigned). Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in 37 CFR 3.81.

Where a real party in interest has filed an application under 37 CFR 1.46, the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest. See 35 U.S.C. 118 and 37 CFR 1.46(e). The use of box 3 of the Part B – Fee(s) Transmittal form, PTOL-85B will be required where the real party in interest has changed from filing of the application and the application was filed pursuant to 37 CFR 1.46.

605.02   Applicant for Application Filed Before September 16, 2012 [R-11.2013]

[Editor Note: See MPEP § 605.01 for information regarding the applicant in applications filed on or after September 16, 2012.]

37 C.F.R. 1.41   Applicant for patent.

  • (a) A patent is applied for in the name or names of the actual inventor or inventors.
    • (1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by §1.63, except as provided for in §§ 1.53(d)(4) and 1.63(d). If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b), unless applicant files a paper, including the processing fee set forth in § 1.17(i), supplying or changing the name or names of the inventor or inventors.
    • (2) The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1). If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying or changing the name or names of the inventor or inventors.
    • (3) In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63 or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name, residence, and citizenship of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
    • (4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis. See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv)1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371).
  • (b) Unless the contrary is indicated the word “applicant” when used in these sections refers to the inventor or joint inventors who are applying for a patent, or to the person mentioned in §§ 1.42, 1.43 or 1.47 who is applying for a patent in place of the inventor.
  • (c) Any person authorized by the applicant may physically or electronically deliver an application for patent to the Office on behalf of the inventor or inventors, but an oath or declaration for the application (§  1.63) can only be made in accordance with § 1.64.
  • (d) A showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.

37 C.F.R. 1.45   Joint inventors.

  • (a) Joint inventors must apply for a patent jointly and each must make the required oath or declaration; neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47.
  • (b) Inventors may apply for a patent jointly even though
    • (1) They did not physically work together or at the same time,
    • (2) Each inventor did not make the same type or amount of contribution, or
    • (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
  • (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.

Pre-AIA 37 CFR 1.41(a) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as provided for in 37 CFR 1.53(d)(4) and pre-AIA 37 CFR 1.63(d). The oath or declaration may be filed on the filing date of the application or on a later date. If an oath or declaration is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to 37 CFR 1.53(b), unless an applicant files a paper under pre-AIA 37 CFR 1.41(a)(1) accompanied by the processing fee set forth in 37 CFR 1.17(i) supplying or changing the name or names of the inventor or inventors.

For correction of inventorship, see MPEP § 602.01(c)et seq.

For applications filed before September 16, 2012, if the application is filed by another, see MPEP § 409.03et seq.

For assignments of application by inventor, see MPEP § 301.

For applications filed before September 16, 2012 by another on behalf of a deceased or legally incapacitated inventor, see MPEP § 409.01(b). For applications filed before September 16, 2012 where at least one inventor is unavailable, see MPEP § 409.03et seq.

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Last Modified: 03/27/2014 10:10:35