How to Correct an Inventorship Patent

Changing inventorship requires serious consideration.

When drafting a patent application, it is very important to identify who the true inventors are because those people will have their names on the patent when it finally issues. Legally, to qualify as an inventor, a person must contribute to at least one claim in a patent application. During the course of prosecuting the application (that is, arguing why the application should be issued), claims may be amended in such a way that named inventors must also be changed. When this happens, inventors are often caught unawares, and the patent may issue with the incorrect inventors listed. Fortunately, the United States Patent and Trademark Office (PTO) has rules to resolve this problem.

Things You'll Need

• Issued patent
• Attorney or patent agent (optional)

Instructions

1. Draft a petition to the director of the PTO, respectfully requesting that the inventors incorrectly named or listed on the patent application be changed. Be sure to include the patent number, the name of the patent, the names of the incorrect inventors and the names of the correct inventors. Sign and date the petition.

2. Draft a separate statement for every new inventor being added to the patent. According to the Manual for Patent Examining Procedures (MPEP), the statement should indicate that the "error occurred without any deceptive intention on his or her part." Each inventor being added to the patent should sign and date the statement.

3. Draft a separate statement for every inventor currently on the patent. According to the MPEP, the statement should indicate that they either agree "to the change of inventorship" (that is, responsibility for the invention) or that they "have no disagreement in regard to the requested change." Each inventor should sign and date the statement.

4. Draft a statement for the assignee (if there is one) to the effect that he or she agrees with the change of inventorship. This should be signed and dated by the assignee. An assignee is the company to whom the inventor assigns the patent.

5. Draft a check for payment of the fee to change to change the inventors listed on the patent.. As of 2010, this fee is $130.00 for both small and large entities.

6. Assemble the petition, the statements, and the fee and mail them to:

   Mail Stop Petition
   Commissioner for Patents
   P.O. Box 1450
   Alexandria, VA 22313-1450.

Tips & Warnings

• Consider consulting an attorney before drafting the petition or statements. Inventorship can be a legally complicated area. You would be wise to consult a professional before proceeding.

References

• MPEP: 1412.04 Correction of Inventorship
• 35 USC 256
• MPEP: Appendix R
• USPTO: Fees