Inventor Declarations, Assignment, and the Uncooperative Co-Inventor
A nonprovisional application lists three inventors: Ana, Ben, and Cara. Ana and Ben assigned their rights to Acme Corp. before filing. Cara refuses to sign an assignment or an inventor's oath/declaration. Cara contributed to the conception of claim 3, which Acme wants to keep. Acme is the applicant. The application was filed without Cara's oath, and the examiner issued a notice requiring the missing declaration. Acme also learned that a fourth person, Dev, contributed to the conception of claim 5, which is currently in the application. Acme wants to know how to proceed with Cara, whether Dev must be added, and what happens if Cara later challenges the inventorship.
1. How can Acme satisfy the inventor declaration requirement without Cara's signature?
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Under 37 C.F.R. 1.64, if an inventor refuses to sign, the applicant may file a substitute statement explaining the refusal and showing that the invention was made by the named inventors. Acme, as applicant, can file the substitute statement for Cara (37 C.F.R. 1.64(d)). The statement must be accompanied by evidence of the refusal or inability to obtain the signature.
However, Acme must also address ownership: Cara has not assigned her rights, so Acme may not own Cara's interest. Acme should consider whether Cara's contribution is essential; if Cara is a true co-inventor of claim 3, Acme needs her assignment or a license to practice that claim. Filing the substitute statement satisfies the declaration requirement but does not transfer ownership. Acme may need to negotiate an assignment or remove claim 3 if Cara will not cooperate.
2. Must Dev be added as an inventor, and what are the consequences of adding Dev at this stage?
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Yes - inventorship must be corrected to include Dev if Dev contributed to the conception of claim 5 (35 U.S.C. 116; MPEP 602.01). Inventorship is determined by the claims, and a person who contributed to the conception of any claimed invention is a joint inventor. Acme should file a request to correct inventorship under 37 C.F.R. 1.48, with the required statements and fees.
Consequences: (1) Dev must sign an oath/declaration or a substitute statement must be filed; (2) Dev must assign rights to Acme, or Acme may lack ownership of claim 5; (3) correction after filing does not change the effective filing date, but failure to correct can render the patent invalid for improper inventorship (though correction is available under 35 U.S.C. 256). Advise Acme to obtain Dev's assignment and declaration promptly.
3. If Cara later challenges inventorship, what is the effect on the patent, and how does the assignment issue interact?
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Improper inventorship is a defense under 35 U.S.C. 282(b)(2) and can invalidate a patent, but 35 U.S.C. 256 permits correction of inventorship by the Director, and courts may order correction. The error must be corrected without deceptive intent. If Cara is a true co-inventor and was omitted, the patent may be invalid unless corrected.
The assignment issue is separate: even if inventorship is corrected, ownership does not automatically follow. Acme's failure to obtain Cara's assignment means Cara may own an undivided interest in the patent, allowing her to license or exploit it without Acme's consent. Acme should secure an assignment or a confirmatory license. The substitute statement cures the declaration defect but not the ownership defect.