C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 1—RULES OF PRACTICE IN PATENT CASES › Subpart B—National Processing Provisions

37 C.F.R. § 1.48

Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application

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(a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41 must include:

(1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name; and

(2) The processing fee set forth in § 1.17(i).

(b) Inventor's oath or declaration for added inventor: An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.

(c) Any request to correct or change the inventorship under paragraph (a) of this section filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in § 1.17(d), unless the request is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.

(d) Provisional application. Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any request to correct or change the inventorship must include:

(1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and

(2) The processing fee set forth in § 1.17(q).

(e) Additional information may be required. The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.

(f) Correcting or updating the name of an inventor: Any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include:

(1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name in the desired order; and

(2) The processing fee set forth in § 1.17(i).

(g) Reissue applications not covered. The provisions of this section do not apply to reissue applications. See §§ 1.171 and 1.175 for correction of inventorship in a patent via a reissue application.

(h) Correction of inventorship in patent. See § 1.324 for correction of inventorship in a patent.

(i) Correction of inventorship in an interference or contested case before the Patent Trial and Appeal Board. In an interference under part 41, subpart D, of this title, a request for correction of inventorship in an application must be in the form of a motion under § 41.121(a)(2) of this title. In a contested case under part 42, subpart D, of this title, a request for correction of inventorship in an application must be in the form of a motion under § 42.22 of this title. The motion under § 41.121(a)(2) or 42.22 of this title must comply with the requirements of paragraph (a) of this section.

[77 FR 48816, Aug. 14, 2012, as amended at 78 FR 4289, Jan. 18, 2013]
Notes of Decisions
Cited in 18 cases (2 in the last 5 years), 1994–2025 · leading case: Pei-Herng Hor v. Ching-Wu \Paul\" Chu", 699 F.3d 1331 (Fed. Cir. 2012).
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Pei-Herng Hor v. Ching-Wu \Paul\" Chu", 699 F.3d 1331 (Fed. Cir. 2012). · cites it 8× “Thus, § 116 likely was not an avail- able avenue for Hor and Meng to correct their omitted inventorship while the applications for the ’866 and ’418 patents were pending before the PTO.”
E.I. Du Pont De Nemours & Co. v. MacDermid Printing Solutions, LLC, 525 F.3d 1353 (Fed. Cir. 2008). · cites it 5× “37 C.F.R. § 1.48 (d) (“If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive intention on the part of the omitted inventor or inventors, the provisional application may be amended to add the name or names…”
Dr. David D. Stark v. Advanced Magnetics, Inc., & Jerome Goldstein, Ernest v. Groman & Lee Josephson, 29 F.3d 1570 (Fed. Cir. 1994). · cites it 3× “Such is the premise of 37 C.F.R. § 1.48 , the regulation on which the district court relied in requiring diligence of Dr.”
Dale R. Schulze & Jon A. Sherman v. David T. Green, Henry Bolanos, Robert J. Geiste, Wayne P. Young, Stephen W. Gerry & Frank M. Rende, III, 136 F.3d 786 (Fed. Cir. 1998). · cites it 9× “The Board was correct, however, in concluding that Appellants failed to comply with the filing requirements of 37 C.F.R. § 1.48 (1997) and failed to heed the Administrative Patent Judge’s (the “APJ’s”) *788 statement that the motion to correct inven-torship could- be refiled at…”
Massachusetts Eye & Ear Infirmary v. QLT Phototherapeutics, Inc., 552 F.3d 47 (1st Cir. 2009). “§ 116 permits the Patent and Trademark Office to correct inventorship in a patent application only with the consent of all parties)(ciimp' 37 C.F.R. § 1.48 ); 35 U.S.C. § 256 (permitting the Patent *65 and Trademark Office to correct inventor-ship of an issued patent with the…”
Hor v. Chu, 765 F. Supp. 2d 903 (S.D. Tex. 2011). · cites it 2× “§ 116 ; 37 C.F.R. § 1.48 . In addition, an action to correct inventorship while the patent application is still pending, under 35 U.”
Sagoma Plastics, Inc. v. Gelardi, 366 F. Supp. 2d 185 (D. Me. 2005). “See 37 C.F.R. § 1.48 (requiring an oath or declaration by all actual inventors that the corrected application correctly states the original or first inventors); see also Iowa State University Research Foundation v.”
Honeywell Int'l Inc. v. United States, 81 Fed. Cl. 514 (Fed. Cl. 2008). “03 (“37 CFR 1.48(e) is directed at correcting the inventorship where the executed oath or declaration had correctly set forth the inventorship but due to amendment of the claims to include previously unclaimed but disclosed subject matter, one or more inventors of the amended…”
ADE CORP. v. KLA-Tencor Corp., 252 F. Supp. 2d 40 (D. Del. 2003). · cites it 2× “Clementi was added as an inventor via a Petition to Correct Inventorship pursuant to 37 C.F.R. § 1.48 (a). (D.I. 627 at '525 Patent Prosecution File History, Petition to Correct Inventorship dated May 10, 1999.”
Perseptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 12 F. Supp. 2d 69 (D. Mass. 1998). “1994); see also 37 C.F.R. § 1.48 (providing procedure in patent office for correction of inventorship in patent application); 37 C.”
Mas-Hamilton Grp. v. LaGard, Inc., 21 F. Supp. 2d 700 (E.D. Ky. 1997). “LaGard’s petition complied with the Patent Office’s requirement set forth in 37 C.F.R. § 1.48 (a)(1) inasmuch as it contained “a statement of facts verified by the original named inventor or inventors.”
PerSeptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315 (Fed. Cir. 2000). “application is not correct, such as when a petition under 37 C.F.R. 1.48(a) is not granted or is not entered for technical reasons, but the admission therein regarding the error in inventorship is un-controverted, a rejection under 35 U.”
Show all 18 citing cases →
— 37 C.F.R. § 1.48(a) — 3 cases
PerSeptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315 (Fed. Cir. 2000). “application is not correct, such as when a petition under 37 C.F.R. 1.48(a) is not granted or is not entered for technical reasons, but the admission therein regarding the error in inventorship is un-controverted, a rejection under 35 U.”
Perseptive Biosystems, Inc. v. Pharmacia Biotech, 225 F.3d 1315 (Fed. Cir. 2000).
Roche Palo Alto LLC v. Ranbaxy Labs. Ltd., 551 F. Supp. 2d 349 (D.N.J. 2008).
— 37 C.F.R. § 1.48(d) — 1 case
E.I. Du Pont De Nemours & Co. v. MacDermid Printing Solutions, LLC, 525 F.3d 1353 (Fed. Cir. 2008). “37 C.F.R. § 1.48 (d) (“If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive intention on the part of the omitted inventor or inventors, the provisional application may be amended to add the name or names…”
— 37 C.F.R. § 1.48(e) — 2 cases
E.I. Du Pont De Nemours & Co. v. MacDermid Printing Solutions, LLC, 525 F.3d 1353 (Fed. Cir. 2008). “37 C.F.R. § 1.48 (d) (“If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive intention on the part of the omitted inventor or inventors, the provisional application may be amended to add the name or names…”
Honeywell Int'l Inc. v. United States, 81 Fed. Cl. 514 (Fed. Cl. 2008). “03 (“37 CFR 1.48(e) is directed at correcting the inventorship where the executed oath or declaration had correctly set forth the inventorship but due to amendment of the claims to include previously unclaimed but disclosed subject matter, one or more inventors of the amended…”
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