May 2011 Issue
Rule 1.47 provides a mechanism for filing a patent application when one or more inventors refuse to join in the application or cannot be found or reached after diligent effort. According to subpart (a), an application may be filed by a co-inventor on behalf of himself or herself and any nonsigning inventor by submitting (1) an oath or declaration executed by the co-inventor, (2) a petition including proof of the pertinent facts, (3) a fee of $200.00, (4) and the last known address of the nonsigning inventor. The Rule also affords the nonsigning inventor an opportunity to later join in the application by submitting an appropriate oath or declaration.
If all of the inventors refuse to execute an application, or cannot be found or reached after diligent effort, subpart (b) allows an assignee or other entity that shows sufficient proprietary interest to file the application on behalf of and as agent for all of the inventors. In this instance, the oath or declaration in the application must be accompanied by (1) a petition including proof of the pertinent facts, (2) a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage, (3) the $200.00 fee noted above, and (4) the last known addresses of all of the inventors. Here again, any inventor may later join the application by submitting an appropriate oath or declaration.
Upon receipt of all necessary materials, the U.S. Patent and Trademark Office (USPTO) will notify all nonsigning inventors of the application filing at the addresses provided in the petition accompanying the oath or declaration. In addition, the USPTO will publish notice of the application filing in the Official Gazette.
Finally, continuing and divisional applications may be entitled to the benefits afforded under Rule 1.47 to their parent applications upon submission of a copy of the declaration and the USPTO decision according Rule 1.47 status to the parent case. However, a new declaration and petition are required for continuation-in-part applications.