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How Can I Correct the Inventors Listed on a Provisional Patent Application?

by Clifford D. Hyra on June 29, 2011

Listing the correct inventors on your patent application is important. Having an incorrect listing can result in invalidity or unenforceability of your patent, loss of ownership rights, and other serious issues. Determining the correct inventorship for a patent application is a legal matter that should be determined by your patent attorney. Two types of errors can be made with regard to inventorship, misjoinder and nonjoinder. Misjoinder is where a person listed as an inventor is not actually an inventor. Nonjoinder is where an actual inventor is not listed as an inventor. If there is no intent to deceive on the part of the person improperly listed or not listed, these errors can be corrected either while the patent application is still pending or after issuance of the patent. However, correction should be made as soon as possible. If the list of inventors is erroneous due to an attempt at deception by the improperly named or unnamed inventors, the application's inventorship cannot be corrected. In some circumstances, the inventorship of an issued patent can be corrected in spite of a deceptive intent, although the patent may be unenforcable (that will be addressed in a future post). The procedure for correcting a provisional patent application is explained below. The procedure for nonprovisional applications differs, and will be explored in a future post.

Provisional Patent Applications

The inventorship of a provisional patent application can be corrected relatively easily. See 37 CFR §1.48(d)-(e).

Improper Nonjoinder in a Provisional Patent Application (37 CFR §1.48(d)):

To add inventors improperly omitted from a provisional patent application, the following items must be submitted:
  1. a request; and
  2. a provisional application processing fee, currently $50.
The request should identify the inventors being added and state that the error occurred without a deceptive intent on the part of those inventors. This request can be signed by the prosecuting patent attorney.

Improper Misjoinder in a Provisional Patent Application (37 CFR §1.48(e)):

To remove inventors improperly included on a provisional patent application, the following items must be submitted:
  1. A request, including the change in inventors;
  2. A statement by the people being removed that the error occurred without a deceptive intent;
  3. A provisional  application processing fee (currently $50); and
  4. Written consent of the assignee (if an assignment was executed by any of the originally named inventors)

Where a Provisional Application Cover Sheet Has Not Been Filed (37 CFR §1.48(f)(2))

If a provisional application cover sheet was not filed with the application, the inventorship will be automatically corrected when the cover sheet is filed (to whatever information is given on the cover sheet).

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