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Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48785sroberts on DSK5SPTVN1PROD with RULESSection 1.42(c) provides that if fewerthan all joint inventors are applying fora patent as provided in § 1.45, thephrase ‘‘the applicant’’ means the jointinventors who are applying for thepatent without the omitted inventor(s).Section 1.42(d) provides that anyperson having authority may deliver anapplication and fees to the Office onbehalf of the applicant. However, anoath or declaration, or substitutestatement in lieu of an oath ordeclaration, may be executed only inaccordance with § 1.63 or 1.64, acorrespondence address may beprovided only in accordance with§ 1.33(a), and amendments and otherpapers must be signed in accordancewith § 1.33(b).Section 1.42(e) provides that theOffice may require additionalinformation where there is a questionconcerning ownership or interest in anapplication, and a showing may berequired from the person filing theapplication that the filing wasauthorized where such authorizationcomes into question.Section 1.43: Section 1.43 providesthat if an inventor is deceased or underlegal incapacity, the legal representativeof the inventor may make an applicationfor patent on behalf of the inventor; andthat if an inventor dies during the timeintervening between the filing of theapplication and the granting of a patentthereon, the letters patent may be issuedto the legal representative upon properintervention. See 35 U.S.C. 117 (‘‘[l]egalrepresentatives of deceased inventorsand of those under legal incapacity maymake application for patent uponcompliance with the requirements andon the same terms and conditionsapplicable to the inventor’’). Section1.43 refers to § 1.64 concerning theexecution of a substitute statement by alegal representative in lieu of an oath ordeclaration.Section 1.45: Section 1.45 pertains toan application for patent by jointinventors. Section 1.45(a) provides thatjoint inventors must apply for a patentjointly, and that each joint inventormust make the inventor’s oath ordeclaration required by § 1.63, except asprovided for in § 1.64. See 35 U.S.C.116(a) (‘‘[w]hen an invention is made bytwo or more persons jointly, they shallapply for patent jointly and each makethe required oath, except as otherwiseprovided in this title.’’). Section 1.45(a)also provides that if a joint inventorrefuses to join in an application forpatent or cannot be found or reachedafter diligent effort, the other jointinventor or inventors may make theapplication for patent on behalf ofthemselves and the omitted inventor.See 35 U.S.C. 116(b) (‘‘[i]f a jointinventor refuses to join in anapplication for patent or cannot befound or reached after diligent effort,the application may be made by theother inventor on behalf of himself andthe omitted inventor.’’). Section 1.45(a)also cross-references § 1.64 concerningthe execution of a substitute statementby the other joint inventor or inventorsin lieu of an oath or declaration.Sections 1.45(b) and (c) contain theprovisions of pre-existing §§ 1.45(b) and(c).Section 1.46: Section 1.46 is amendedto provide for the filing of anapplication for patent by an assignee, aperson to whom the inventor is underan obligation to assign the invention, ora person who otherwise showssufficient proprietary interest in thematter under 35 U.S.C. 118. Section1.46(a) provides that a person to whomthe inventor has assigned or is under anobligation to assign an invention maymake an application for patent. Section1.46(a) also provides that a person whootherwise shows sufficient proprietaryinterest in the matter may make anapplication for patent on behalf of andas agent for the inventor on proof of thepertinent facts and a showing that suchaction is appropriate to preserve therights of the parties. The ability for aperson who otherwise shows sufficientproprietary interest in the matter waspreviously set forth in former § 1.47(b),which restricted such ability tosituations in which all of the inventorsrefused to execute the application, orcould not be found or reached afterdiligent effort.Section 1.46(b) provides that if anapplication under 35 U.S.C. 111 is madeby a person other than the inventorunder § 1.46(a), the application mustcontain an application data sheet under§ 1.76 specifying in the applicantinformation section (§ 1.76(b)(7)) theassignee, the person to whom theinventor is under an obligation to assignthe invention, or the person whootherwise shows sufficient proprietaryinterest in the matter. Section 1.46(b)further provides that if the applicationis the national stage of an internationalapplication, the person who isidentified in the international stage asan applicant for the United States is theperson specified as the originalapplicant for the national stage. Whileidentifying the party making theapplication for patent (the applicant) inan application data sheet is not a filingdate requirement, a delay in naming theapplicant under § 1.46 in an applicationdata sheet may cause it to appear thatthe applicant is the inventor and thusrequiring the party to proceed underVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00011 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6§§ 3.71 and 3.73 to become theapplicant.Section 1.46(b)(1) provides that if theapplicant is the assignee or person towhom the inventor is under anobligation to assign an invention, thedocumentary evidence of ownership(e.g., assignment for an assignee,employment agreement for an obligatedassignee) should be recorded asprovided for in 37 CFR part 3 no laterthan the date the issue fee is paid in theapplication. Section 1.46(b)(2) providesthat if the applicant is a person whootherwise shows sufficient proprietaryinterest in the matter, such applicantmust submit a petition including: (1)The fee set forth in § 1.17(g); (2) ashowing that such person has sufficientproprietary interest in the matter; and(3) a statement that making theapplication for patent by a person whootherwise shows sufficient proprietaryinterest on behalf of and as agent for theinventor is appropriate to preserve therights of the parties. A discussion of theevidence necessary for a showing that aperson has sufficient proprietaryinterest in the matter is set forth inMPEP § 409.03(f).Section 1.46(c) provides that anyrequest to correct or update the name ofthe applicant after an applicant has beenspecified under § 1.46(b) must includean application data sheet under § 1.76specifying the correct or updated nameof the applicant in the applicantinformation section (§ 1.76(b)(7)). Thus,if there is no change in the applicantitself but just the applicant’s name (dueto a correction or name change), theapplicant need only submit anapplication data sheet specifying thecorrect or updated name of theapplicant in the applicant informationsection (§ 1.76(b)(7)). Section 1.46(c)also provides that any request to changethe applicant after an original applicanthas been specified under § 1.46(b) mustinclude an application data sheet under§ 1.76 specifying the applicant in theapplicant information section(§ 1.76(b)(7)) and must comply with§§ 3.71 and 3.73. Thus, if there is achange of applicant under § 1.46(b)(either from the inventor to the assignee,or from one assignee to anotherassignee), the new applicant mustestablish its ownership of theapplication under §§ 3.71(b) and 3.73.Section 1.46(d) provides that even ifthe whole or a part interest in theinvention or in the patent to be issuedis assigned or obligated to be assigned,an oath or declaration must be executedby the actual inventor or each actualjoint inventor, except as provided for in§ 1.64. This provision is similar to theprovisions of former § 1.46. Section 1.46