600 Parts, Form, and Content of Application

605.01: clarify partial and obligated assignee-Applicant

Fact pattern: A corporation is applying for a patent. A first inventor has signed the Assignment papers assigning that inventor's rights to the corporation. A second inventor is on vacation and cannot sign the Assignment before filing, but is under an obligation to assign to the corporation.

 

MPEP 605.01, and the language in the ADS (PTO/AIA/14 (11-15)), are unclear about whether to list one or two Applicants in this situation. 37 CFR 1.46(a) is clear that "A person to whom the inventor ... is under an obligation to assign ... may make an application." That suggests to me that only the corporation is the Applicant, just as if no inventors had assigned.

 

However, 605.01 (Nov. 2015), at 600-121, left column, says that "If an assignee is filing an application ... but ... is not the assignee of the entire ... application, then the assignee would need to be named as the applicant ... >>together with the other party who has an ownership interest<<" (>>emphasis<< added). That suggests to me that both the corporation and the second inventor are Applicants, and should be listed on the ADS.

 

605.01 goes on to provide an example in which "one inventor has assigned ... but the other inventor has not ... and >>is under no obligation to assign<<" (emphasis added). However, that does not cover the fact pattern above, in which the non-assignor is obligated to assign.

 

I believe the language of 605.01 is correct but incomplete, since "an assignee" is not filing the application in this fact pattern, but rather a "person to whom the inventor is obligated to assign." Would you please consider adding an example or otherwise clarifying? Perhaps add another paragraph after the cited paragraph; a draft proposal is below.

 

**Edit** Similarly, would you consider updating the language in the ADS, in the Applicant Information section, the descriptive paragraph beginning "If the applicant...", the last sentence, to refer to MPEP 605.01?

 

------

 

If any joint inventor(s) have not assigned their right, title, and interest in an application to a party, but are under an obligation to do so, the party may make application under 37 CFR 1.46 as a person to whom the inventor is under an obligation to assign. This is true even if some joint inventor(s) have already assigned their right, title, and interest in the application to the party. The party should be listed on the ADS as the sole Applicant. Any joint inventor(s) who have not yet assigned, but are obliged to do so, should not be listed as additional Applicants. The party making the application should be listed on the ADS as a "Person to whom the inventor is obligated to assign," not as an "Assignee."

Tags

Voting

0 votes
0 up votes
0 down votes
Active
Idea No. 217