Correction of inventorship where not all parties are in agreement

Q) Broadening Reissue (10.02.12a)

12. Inventor A filed a patent application and assigned the entire interest in the application to his employer,

MegaCorp. The application issued as a utility patent on July 9, 2002. In June 2004, MegaCorp’s management first

learns that a second inventor, Inventor B, should have been named as a co-inventor with respect to at least one

claim of the issued patent. There was no deceptive intent in failing to name Inventor B in the original application.

Inventor A, who is unfamiliar with patent law and concepts of inventorship, incorrectly believes that he should be

the sole named inventor on the patent, and refuses to cooperate with any effort by MegaCorp to change the named

inventive entity. The issued patent contains no other error. In accordance with the Manual of Patent Examining

Procedure, which of the following procedures is/are available for MegaCorp to seek correction of the named inventive

entity without any agreement, cooperation or action from Inventor A?

(A) File, on or before July 9, 2004, a reissue application, made by MegaCorp only, that seeks to add Inventor B.

(B) File, after July 9, 2004, a reissue application, made by MegaCorp only, that seeks to add Inventor B.

(C) Request a Certificate of Correction to add Inventor B as a named inventor.

(D) Submit in the issued patent file: a Request for Correction of Inventorship Under the Provisions of 37 CFR 1.48

that sets forth the desired inventorship change; a statement by Inventor B that the error in inventorship occurred

without deceptive intention on her part; an oath or declaration executed by Inventor B; all required fees; and the

written consent of MegaCorp.

(E) A and B are each available procedures.

Variation of 12 (filing a reissue outside the two year limitation is fine if there is no broadening;

just add inventor)…same concept tested.

12. ANSWER: The best choice is (E). See MPEP § 1412.04. Reissue is a proper vehicle for correcting

inventorship in a patent. Because correction of inventorship does not enlarge the scope of the patent claims,

the reissue application may be filed more than two years after the patent issued. Answers (A) and (B) are

therefore both correct, and (E) is the best response. Although a certificate of correction may be used to

correct inventorship where all parties are in agreement, the facts of the question show that Inventor A is not

in agreement. Choice (C) is thus not an available option for MegaCorp. Choice (D) is incorrect because the

provisions of 37 C.F.R. § 1.48 are not available to correct inventorship in an issued patent.