A patent must identify the correct inventors. A patent which names the wrong inventors can be invalidated.
Sometimes, friends and spouses want to identify each other to be nice, but a person is only an inventor if they have contributed to material claimed in the patent. Occasionally, mistakes are made in the identification of the inventorship and they have to be corrected.
Inventorship can be corrected if the mistake occurred in the original oath or declarations, or if the inventorship was not updated as the examination was processed and the claimed subject matter changed.
Although there is no requirement that an inventorship mistake be corrected diligently after it is discovered, there are timing requirements. This means that corrections that are made after a notice of allowance has been mailed will not necessarily be approved; though rarely will an Examiner deny the correction.
The main requirement in fixing this mistake is ensuring that it did not happen on purpose, that there was no “deceptive intent.” The patent rules state that if the inventorship is mistakenly submitted an executed oath or declaration in a nonprovisional application, and the mistake arose without any deceptive intent on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, then the inventorship may be corrected to name only the actual inventor or inventors.
Correction may be requested in cases where the person originally named as inventor was in fact not an inventor or was not the sole inventor. If such an error occurred without any deceptive intent on the part of the erroneous inventor, then the Patent Office can substitute the correct inventorship for the erroneous inventorship. Instances where corrections can be made include changes from: a mistaken sole inventor to a different but actual sole inventor; a mistakenly identified sole inventor to different, but actual, joint inventors; a sole inventor to joint inventors to include the original sole inventor; erroneously identified joint inventors to different but actual joint inventors; and erroneously identified joint inventors to a different, but actual, sole inventor.
Amendment of the inventorship requires:
- A request to correct the inventorship, explaining the requested change;
- A statement from each person being added (if applicable) as an inventor that the error in inventorship occurred without deceptive intention on his or her part;
- A statement from each person being deleted (if applicable) as an inventor that there was no deceptive intent error in inventorship occurred without deceptive intention on his or her part;
- An oath or declaration by the actual inventor or inventors
- The processing fee ($35 for small entities as of the time of this writing) and potentially an additional processing fee depending on the timing of the request
- If the patent application has been assigned, then written consent of the assignee
- A corrected Application Data Sheet that updates the inventorship with markings