Rights of non-signing inventor

Q) Non-signing Inventor (10.02.1a)

1. In accordance with the MPEP and USPTO rules and procedure, an application for patent may be made

on behalf of a joint inventor in certain situations. Who, by petition, may make application on behalf

of a joint inventor who has refused to sign the application (“nonsigning inventor”), if the other

joint inventor (“signing inventor”) executes the application?

(A) A person other than the signing inventor, to whom the nonsigning inventor has assigned the invention.

(B) A person other than the signing inventor, with whom the nonsigning inventor has agreed in writing to assign the invention.

(C) The signing inventor.

(D) A person other than the signing inventor, who shows a strong proprietary interest in the invention.

(E) All of the above.

1. ANSWER: Choice (C) is the correct answer. MPEP § 409.03(a), and 37 C.F.R. § 1.47(a).

37 C.F.R. § 1.47(a) provides, “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 or herself and the nonsigning inventor. The oath or declaration in

such an application must be accompanied by a petition including proof of the pertinent facts, the

fee set forth in § 1.17(h), and the last known address of the nonsigning inventor. The nonsigning

inventor may subsequently join in the application by filing an oath or declaration complying with

§ 1.63.” Choices (A), (B), and (D) are each incorrect because they are not provided for by 37

C.F.R. § 1.47(a). MPEP § 409.03 (b), in pertinent part provides, “Where 37 C.F.R. § 1.47(a) is

available, application cannot be made under 37 C.F.R. § 1.47(b).” Choice (E) is incorrect

because choices (A), (B), and (D) are each incorrect.