Summer's advice article
Pro Se Assistance Program
As part of the America Invents Act (AIA), the USPTO 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. The new rules also 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 and Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act; Final Rule). Accordingly, the term “applicant” is no longer synonymous with “inventor(s)” and it is important for independent inventors to remember this distinction.
An “inventor” in a nonprovisional patent application must be a person who made a contribution, individually or jointly, to the subject matter of at least one claim of the application. The “applicant” can be a single inventor, joint inventors, a legal representative of a deceased or legally incapacitated inventor, 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 who is applying for a patent and is not the inventor, or a combination of two or more parties.
If an application filed under 35 U.S.C. § 111 is made by a person other than the inventor, the application must contain an application data sheet (ADS) specifying 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. This information must be specified in the “Applicant Information” section of the ADS (37 CFR § 1.76(b)(7)). Care should be taken when filling out the ADS to ensure that only applicable sections are filled out, keeping in mind that not all sections may be applicable to every case. See Common Pitfalls on USPTO Forms and Important Information for Completing an ADSS.
In addition, if the applicant is the assignee or a person to whom the inventor is under an obligation to assign an invention, documentary evidence of ownership (e.g., assignment for an assignee or employment agreement for an obligated assignee) should be recorded with the USPTO no later than the date the issue fee is paid in the application. Providing assignment information in the ADS does not substitute for compliance with any requirement of 37 CFR Part 3 (Assignment, Recording and Rights of Assignee) to have the USPTO record an assignment.
While there may be advantages to filing as an assignee-applicant (e.g., business considerations), there are other factors that must be kept in mind when choosing who to name as the applicant in a patent application. These factors most notably include:
- The requirement for juristic entities (e.g., corporations or other non-human entities created by law and given certain legal rights) to be represented by a patent practitioner; and
- The difficulty in changing the applicant once it has been established.
The majority of papers submitted on behalf of a juristic entity applicant must be signed by a registered patent practitioner (i.e., a patent attorney or patent agent who is registered to practice before the USPTO), including responses to office actions. Patent practitioners may or may not be attorneys, but they must meet the requirements of 37 CFR § 11.7 including the legal, scientific, and technical qualifications, as well as good moral character and reputation. More information on becoming registered to practice in patent matters before the USPTO, and thus able to sign papers for juristic entity applicants, is available online. A limited number of papers may be signed by an appropriate official on behalf of the juristic entity (e.g., an officer or chairman of the board of directors). These papers include substitute statements, small entity assertions, terminal disclaimers, powers of attorney, and submissions under 37 CFR § 3.73(c) for an assignee to establish ownership of patent property if the assignee is not the original applicant.
Sometimes, inventors who own a small business are represented by a patent practitioner when filing an application but later decide to continue prosecution pro se (i.e., without using the services of a registered practitioner) and must change the applicant from a juristic entity to a person or persons to do so. Changing the applicant is governed by 37 CFR § 1.46(c). If there is no change other than the applicant’s name (e.g., due to a minor typographical error or name change), the applicant need only submit a request to correct or update the applicant under 37 CFR § 1.46(c)(1) (essentially a signed transmittal letter) and a “Corrected” ADS marked up to show the misspelled or former name with strikethrough and the correct or updated name with underlining in the “Applicant Information” section. However, any other change to the applicant must include a request to change the applicant under 37 CFR § 1.46(c)(2), the “Corrected” (marked-up) ADS and comply with 37 CFR §§ 3.71 and 3.73, which require the new applicant to establish ownership of the application to the satisfaction of the USPTO director. Since patents confer legal rights, there must be no ambiguity about who is the patent owner. The statement establishing assignee’s ownership under 37 CFR § 3.73(c) must contain:
- Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment submitted for recording) and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is, submitted for recordation pursuant to 37 CFR § 3.11; or
- A statement specifying, by reel and frame number, where such evidence is recorded in the USPTO.
Each individual inventor may only assign the interest he or she holds; thus where there are two or more joint inventors, assignment by less than all joint inventors renders the assignee a partial assignee. It is important to note that all parties having any portion of the ownership in the patent property must act together as a composite entity in matters before the USPTO and therefore must be named as the applicant.
There is a form (Form AIA/96) available to assist applicants with the statement for establishing ownership under 37 CFR § 3.73(c). The establishment of ownership by the assignee and the request for change of applicant must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted. For example, if a paper requesting or taking action is submitted and signed by the intended new applicant but the establishment of ownership and request for change of applicant are not present and sufficient, the submitted papers would be treated as not signed by the applicant in accordance with 37 CFR § 1.33(b).
In situations where there has been no assignment (or there is no obligation to assign) between the applicant and the inventor(s) and the applicant was named by mistake, the inventor(s) may need to file a petition under 37 CFR § 1.182 to correct an error in identifying the applicant. Applicants should keep in mind that any applicable time period for response will continue to run even if a petition is filed under 37 CFR § 1.182 (i.e., the applicant must submit a complete response to an office action within the statutory time period to avoid abandonment) and that the applicant will not be changed until the petition is actually granted by the USPTO.
Regardless of who the applicant is, all named inventors must execute an oath or declaration in accordance with 37 CFR § 1.63. The applicant may, however, execute a substitute statement in lieu of an oath or declaration if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration, or cannot be found or reached after diligent effort (see 37 CFR § 1.64). Joint inventors may only execute a substitute statement on behalf of a joint inventor who cannot be found or reached after diligent effort or who has refused to execute the oath or declaration. All joint inventors who are the applicant would need to execute the substitute statement on behalf of the non-signing inventor. Joint inventors may not execute a substitute statement on behalf of an inventor who is deceased or under a legal incapacity. Where one of the joint inventors is deceased or legally incapacitated, the legal representative (e.g., executor or guardian) would need to execute the substitute statement. Instructions for completing the USPTO’s substitute statement form (Form AIA/02) can be found here.
Submission of the inventor’s oath or declaration may be postponed until payment of the issue fee if a properly signed ADS is filed that identifies the entire inventive entity, including legal name, residence, and mailing address for each inventor. However, to avoid payment of a surcharge under 37 CFR § 1.16(f), an inventor’s oath or declaration, including a substitute statement, executed by or with respect to each inventor, must be submitted on the same day the nonprovisional application is filed.
For more information, please see the Manual of Patent Examining Procedure (MPEP) sections 602 and 605 and 37 CFR §§ 1.46, 1.53 and 3.73.
Pro Se Assistance is a current USPTO pilot program that offers customer service to applicants filing patent applications without legal representation. While an applicant may prosecute the application and file papers in their application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicants are advised to secure the services of a registered patent attorney or agent to draft and prosecute a patent application, since the value of a patent is largely dependent upon skilled preparation and prosecution. USPTO employees (including Pro Se Assistance and the examiner of record) cannot give legal advice. To assist applicants in making informed decisions, Pro Se Assistance can help applicants navigate www.uspto.gov and the Manual of Patent Examining Procedure (MPEP) to locate publically available educational resources.