35 U.S.C. § 116 — Inventors

Page 51 TITLE 35—PATENTS § 116 authorized to administer oaths in the foreign country in which the applicant may be, whose authority is proved by certificate of a diplomatic or consular officer of the United States, or apostille of an official des- ignated by a foreign country which, by treaty or con- vention, accords like effect to apostilles of designated officials in the United States, and such oath shall be valid if it complies with the laws of the state or coun- try where made. When the application is made as pro- vided in this title by a person other than the inventor, the oath may be so varied in form that it can be made by him. For purposes of this section, a consular officer shall include any United States citizen serving over- seas, authorized to perform notarial functions pursuant to section 1750 of the Revised Statutes, as amended (22 U.S.C. 4221).’’ 1998—Pub. L. 105–277 inserted at end ‘‘For purposes of this section, a consular officer shall include any United States citizen serving overseas, authorized to perform notarial functions pursuant to section 1750 of the Re- vised Statutes, as amended (22 U.S.C. 4221).’’ 1982—Pub. L. 97–247 substituted ‘‘is’’ for ‘‘shall be’’ after ‘‘whose authority’’, and inserted ‘‘, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2013 AMENDMENT Amendment by Pub. L. 112–274 effective Jan. 14, 2013, and applicable to proceedings commenced on or after such date, see section 1(n) of Pub. L. 112–274, set out as a note under section 5 of this title. EFFECTIVE DATE OF 2012 AMENDMENT Amendment by Pub. L. 112–211 effective on the later of the date that is 1 year after Dec. 18, 2012, or the date that the Geneva Act of the Hague Agreement Con- cerning the International Registration of Industrial Designs enters into force with respect to the United States (May 13, 2015), and applicable only to certain ap- plications filed on and after that effective date and pat- ents issuing thereon, see section 103 of Pub. L. 112–211, set out as a note under section 100 of this title. EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent application that is filed on or after that effective date, see section 4(e) of Pub. L. 112–29, set out as a note under section 111 of this title. EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–247 effective Aug. 27, 1982, see section 17(a) of Pub. L. 97–247, set out as a note under section 41 of this title. § 116. Inventors (a) JOINT INVENTIONS.—When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the re- quired oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work to- gether or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. (b) OMITTED INVENTOR.—If a joint inventor re- fuses to join in an application for patent or can- not be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application. (c) CORRECTION OF ERRORS IN APPLICATION.— Whenever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an ap- plication, the Director may permit the applica- tion to be amended accordingly, under such terms as he prescribes. (July 19, 1952, ch. 950, 66 Stat. 799; Pub. L. 97–247, § 6(a), Aug. 27, 1982, 96 Stat. 320; Pub. L. 98–622, title I, § 104(a), Nov. 8, 1984, 98 Stat. 3384; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, § 20(a), Sept. 16, 2011, 125 Stat. 333.) HISTORICAL AND REVISION NOTES The first paragraph is implied in the present statutes, and the part of the last paragraph relating to omission of an erroneously joined inventor is in the Patent Of- fice rules. The remainder is new and provides for the correction of a mistake in erroneously joining a person as inventor, and for filing an application when one of several joint inventors cannot be found. This section is ancillary to section 256. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 designated first to third pars. as subsecs. (a) to (c), respectively, inserted headings, and, in subsec. (c), struck out ‘‘and such error arose without any deceptive intention on his part,’’ before ‘‘the Direc- tor’’. 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ in two places. 1984—Pub. L. 98–622 amended first par. generally, striking out ‘‘and each sign the application’’ after ‘‘patent jointly’’ and inserting sentence beginning ‘‘In- ventors may apply’’. 1982—Pub. L. 97–247 substituted ‘‘Inventors’’ for ‘‘Joint inventors’’ as section catchline, and substituted ‘‘through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application’’ for ‘‘a person is joined in an application for patent as joint inventor through error, or a joint inventor is not included in an applica- tion through error’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE OF 1984 AMENDMENT Amendment by Pub. L. 98–622 applicable to all United States patents granted before, on, or after Nov. 8, 1984, Page 52 TITLE 35—PATENTS § 117 and to all applications for United States patents pend- ing on or filed after that date, except as otherwise pro- vided, see section 106 of Pub. L. 98–622, set out as a note under section 103 of this title. EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L. 97–247, set out as an Effective Date note under section 294 of this title. § 117. Death or incapacity of inventor Legal representatives of deceased inventors and of those under legal incapacity may make application for patent upon compliance with the requirements and on the same terms and condi- tions applicable to the inventor. (July 19, 1952, ch. 950, 66 Stat. 799.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 46 (R.S. 4896, amended (1) Feb. 28, 1899, ch. 227, 30 Stat. 915, (2) Mar. 3, 1903, ch. 1019, § 3, 32 Stat. 1225, 1226, (3) May 23, 1908, ch. 188, 35 Stat. 245). The language has been considerably simplified. § 118. Filing by other than inventor A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary in- terest in the matter may make an application for patent on behalf of and as agent for the in- ventor on proof of the pertinent facts and a showing that such action is appropriate to pre- serve the rights of the parties. If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient. (July 19, 1952, ch. 950, 66 Stat. 799; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, § 4(b)(1), Sept. 16, 2011, 125 Stat. 296.) HISTORICAL AND REVISION NOTES This section is new and provides for the filing of an application by another on behalf of the inventor in cer- tain special hardship situations. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, text read as follows: ‘‘Whenever an in- ventor refuses to execute an application for patent, or cannot be found or reached after diligent effort, a per- son to whom the inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for the inventor on proof of the perti- nent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irrep- arable damage; and the Director may grant a patent to such inventor upon such notice to him as the Director deems sufficient, and on compliance with such regula- tions as he prescribes.’’ 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ in two places. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent application that is filed on or after that effective date, see section 4(e) of Pub. L. 112–29, set out as a note under section 111 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. § 119. Benefit of earlier filing date; right of pri- ority (a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, pre- viously regularly filed an application for a pat- ent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citi- zens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this coun- try is filed within 12 months from the earliest date on which such foreign application was filed. The Director may prescribe regulations, includ- ing the requirement for payment of the fee spec- ified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application in this country within the 12-month period was unintentional. (b)(1) No application for patent shall be enti- tled to this right of priority unless a claim is filed in the Patent and Trademark Office, identi- fying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time dur- ing the pendency of the application as required by the Director. (2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim under this section. (3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a trans- lation if not in the English language, and such other information as the Director considers nec- essary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers. (c) In like manner and subject to the same conditions and requirements, the right provided