35 U.S.C. § 116

Inventors

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(a)Joint Inventions.—When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.(b)Omitted Inventor.—If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.(c)Correction of Errors in Application.—Whenever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application, the Director may permit the application to be amended accordingly, under such terms as he prescribes.(July 19, 1952, ch. 950, 66 Stat. 799; Pub. L. 97–247, § 6(a), Aug. 27, 1982, 96 Stat. 320; Pub. L. 98–622, title I, § 104(a), Nov. 8, 1984, 98 Stat. 3384; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, § 20(a), Sept. 16, 2011, 125 Stat. 333.)Historical and Revision Notes

The first paragraph is implied in the present statutes, and the part of the last paragraph relating to omission of an erroneously joined inventor is in the Patent Office rules. The remainder is new and provides for the correction of a mistake in erroneously joining a person as inventor, and for filing an application when one of several joint inventors cannot be found. This section is ancillary to section 256.

Editorial NotesAmendments

2011—Pub. L. 112–29 designated first to third pars. as subsecs. (a) to (c), respectively, inserted headings, and, in subsec. (c), struck out “and such error arose without any deceptive intention on his part,” before “the Director”.

2002—Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113. See 1999 Amendment note below.

1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted “Director” for “Commissioner” in two places.

1984—Pub. L. 98–622 amended first par. generally, striking out “and each sign the application” after “patent jointly” and inserting sentence beginning “Inventors may apply”.

1982—Pub. L. 97–247 substituted “Inventors” for “Joint inventors” as section catchline, and substituted “through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application” for “a person is joined in an application for patent as joint inventor through error, or a joint inventor is not included in an application through error”.

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1999 Amendment

Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Effective Date of 1984 Amendment

Amendment by Pub. L. 98–622 applicable to all United States patents granted before, on, or after Nov. 8, 1984, and to all applications for United States patents pending on or filed after that date, except as otherwise provided, see section 106 of Pub. L. 98–622, set out as a note under section 103 of this title.

Effective Date of 1982 Amendment

Amendment by Pub. L. 97–247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L. 97–247, set out as an Effective Date note under section 294 of this title.

Notes of Decisions

Cited in 229 cases (32 in the last 5 years), 1960–2025 · leading case: Ethicon, Inc. & Inbae Yoon, M.D. v. United States Surgical Corp. & Young Jae Choi, 135 F.3d 1456 (Fed. Cir. 1998).

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Ethicon, Inc. & Inbae Yoon, M.D. v. United States Surgical Corp. & Young Jae Choi, 135 F.3d 1456 (Fed. Cir. 1998). · cites it 11× “See 35 U.S.C. § 116 (1994). Because “[conception is the touchstone of inventorship,” each joint inventor must generally contribute to the conception of the invention.”

Vanderbilt Univ. v. ICOS CORP., 601 F.3d 1297 (Fed. Cir. 2010). · cites it 8× “Nor could tadalafil have been identified by Dr.”

Pei-Herng Hor v. Ching-Wu \Paul\" Chu", 699 F.3d 1331 (Fed. Cir. 2012). · cites it 9× “Patent and Trademark Office (“PTO”)—namely, petitioning for correction of inventor- ship under 35 U.S.C. § 116 or initiating a 35 U.S.C.”

Moore v. Regents of Univ. of California, 793 P.2d 479 (Cal. 1990). · cites it 4× “( 35 U.S.C. § 116 .) But he does fall within the spirit of that law: "The joint invention provision guarantees that all who contribute in a substantial way to a product's development benefit from the reward that the product brings.”

Eli Lilly & Co. v. Aradigm Corp., Defendant-Cross, 376 F.3d 1352 (Fed. Cir. 2004). · cites it 3× “See 35 U.S.C. § 116 (2000) (“Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every…”

John H. Coleman v. Martin B. Dines, 754 F.2d 353 (Fed. Cir. 1985). · cites it 5× “The Board’s Findings The Board decided that Coleman failed to present sufficient facts to establish that there was an “error” cognizable under 35 U.S.C. § 116 3 in the original designation of joint inventorship in the ’615 application (Coleman and Marks).”

Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 776 F.3d 837 (Fed. Cir. 2015). · cites it 6× “Gore argues that because there is no 1 Gore sought to appeal the question of inventorship under 35 U.S.C. § 116 to the Supreme Court, which denied its petition for certiorari.”

Camsoft Data Sys., Inc. v. S. Elec. Supply, Inc., 756 F.3d 327 (5th Cir. 2014). · cites it 4× “3d at 1353 (referring to 35 U.S.C. § 116 (c), which allows for modification of application, and id.”

Display Rsch. Labs., Inc. v. Telegen Corp., 133 F. Supp. 2d 1170 (N.D. Cal. 2001). · cites it 6× “Telegen therefore seeks an order from this Court pursuant to 35 U.S.C. §§ 116 and 256, amending the applications to include the correct inventors.”

David D. Stark, M.D. v. Advanced Magnetics, Inc., Jerome Goldstein, Ernest v. Groman, & Lee Josephson, 119 F.3d 1551 (Fed. Cir. 1997). · cites it 4× “The patent statute also authorizes correction of the inventors’ names in applications, 35 U.S.C. § 116 , and in patents, 35 U.S.”

Smithkline Diagnostics, Inc. v. Helena Labs. Corp., Defendant/cross-Appellant, 859 F.2d 878 (Fed. Cir. 1989). · cites it 2× “§ 103 (1982), and invalid under 35 U.S.C. § 116 (1982) for failure to name the proper inventors.”

Perseptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 12 F. Supp. 2d 69 (D. Mass. 1998). · cites it 9× “Based on the undisputed facts in the record, the Court concluded as a matter of law that, pursuant to 35 U.S.C. § 116 , Frank Warner and/or Linda Lloyd were joint inventors of three patents concerning “perfusive chromatography”.”

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— 35 U.S.C. § 116(a) — 1 case

Plate, LLC v. Elite Tactical Sys., LLC (E.D. Tenn. 2020).

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