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Question:
If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, is it ever necessary to change the inventorship named in the application?
Answer:
If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, it may become necessary to change the inventorship named in the application if the elected invention is not the invention of all the originally named joint inventors.
In such a case, a “divisional” application would be entitled to the benefit of the earlier filing date of the original application. In requiring restriction in an application filed by joint inventors, the examiner should remind applicants of the necessity to correct the inventorship if an invention is elected and all of the claims to the invention of one or more joint inventors are canceled.
In such scenarios, inventorship overlap required by 35 U.S.C. 120 is met even though at the time of filing of the divisional application, the inventorship overlap was lost as a result of the deletion of a joint inventor in the parent application and filing of only claims invented by that inventor in the divisional application. The overlap of inventorship need not be present on the date the continuing application is filed nor present when the parent application issues or becomes abandoned if the parent application prior to restriction names the inventor or a joint inventor of the divisional application as a joint inventor(s) in the parent application.
Chapter Details:
The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types and Status of Application; Benefit and Priority Claims.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 201.06 of the MPEP. The following is a brief summary of section 201.06.
201.06 Divisional Application
This section describes divisional applications which cover instances when an inventor initially tries to patent an invention that is actually two or more separate inventions. In this instance, he or she will be required to cut out some of the claims from the original patent application. If he or she still wants to patent the invention(s) that were cut out, a separate application called a divisional application should be filed. The divisional application will have the same filing date as the original (now known as the parent) application.