Rule 47 Petitions

Beverly FlanaganSupervisory Petitions Examiner

(703) 305-7202

47(a) and 47(b) – The Difference

• 47(a)– When one or more of the named inventors did not

sign the declaration– Other inventors have signed (ex. two inventors

sign and one does not)• 47(b)

– When none of the of the named inventors signs the declaration

– Entity with sufficient proprietary interest steps in

Two “Types” of Petition

• Non-Signing inventor refuses to sign

• Non-Signing inventor cannot be found

47(a) – Refuses to Sign

• Petition Requirements1) Petition fee ($130)2) Surcharge ($130 or $65) if the petition is

filed in response to a Notice to File Missing Parts- must be the address where the non-signing inventor customarily receives mail

3) Last Known Address of the non-signing inventor(s) [MPEP 409.03(e)]

47(a) – Refuses to Sign, con’t

- must be stated to be the last known address of the inventor 4) Proof that a copy of the entire application was sent or given to the non-signing inventor for review [MPEP 409.03(d)]

- must be a copy of the entire application papers (spec, claims, drawings and declaration)

- Acceptable Proof: a. copy of a cover letter transmitting

the entire

47(a) – Refuses to Sign, con’t

application papersb. affidavit setting forth facts and details, signed by a person having first-hand knowledge 5) Proof that the inventor refuses to sign- Acceptable Proof:a. copy of a written refusalb. oral refusal – affidavit providing facts and details of the refusal signed by the person towhom the refusal was made

47(a) – Refuses to Sign, con’t

- no response may be tantamount to a refusal to sign6) Declaration in compliance with 37 CFR 1.63

47(a) – Cannot Be Found

• Petition Requirements1) Petition fee ($130)2) Surcharge ($65 or $130) if the

petition is filed in response to a Notice to File Missing Parts

3) Last Known Address of the non-signing inventor [MPEP 409.03(e)]

- must be stated to be the last known address of the inventor

47(a) – Cannot Be Found, con’t

4) Proof that diligent efforts have been made to locate the non-signing inventor [MPEP 409.03(d)]

- Acceptable Proof:a. copy of an envelope showing that a letter was sent to the last know address of the inventor and was returned as undeliverableb. affidavit setting forth facts and details regarding

the efforts made to locate the non-signing inventor;

signed by a person having first hand knowledge of the

facts

47(a) – Cannot Be Found, con’t

5) Declaration in compliance with 37 CFR 1.63

47(b) – Refuses to Sign

• Petition Requirements1) Petition fee ($130)2) Surcharge ($65 or $130) if the

petition is filed in response to a Notice to File Missing Parts

3) Last Known Address of the non-signing inventor [MPEP 409.03(e)]

- must be stated to be the last known address of the inventor

47(b) – Refuses to Sign, con’t

4) Proof that a copy of the entire application was sent or given to the non-signing inventor for review [MPEP 409.03(d)]

- must be a copy of the entire application papers (spec, claims, drawings and declaration)

- Acceptable Proof: a. copy of a cover letter transmitting

the entire

47(b) – Refuses to Sign, con’t

application papers

b. affidavit setting forth facts and details, signed by a person having first-hand

knowledge 5) Proof that all of the inventors refuse to sign

- Acceptable Proof:a. copy of a written refusalb. oral refusal – affidavit providing facts and details of the refusal signed by the person towhom the refusal was made

47(b) – Refuses to Sign, con’t

- no response may be tantamount to a refusal to sign

- may require individual proof of refusal for each inventor

6) Proof that the Rule 47 Applicant has sufficient proprietary interest in the subject matter to justify the filing of the application

- Acceptable Proof:a. copy of the employment agreementb. copy of an assignment agreement

47(b) – Refuses to Sign, con’t

c. legal memorandum signed by an attorney familiar

with the law of the jurisdiction stating that a court of competent jurisdiction would, by the weight of the authority, award the title of the invention to the Rule47(b) applicant

7) Proof of irreparable damage- Acceptable Proof:- statement by the Rule 47(b) applicant that the filing of the application is necessary to preserve the rights of the parties

47(b) – Refuses to Sign, con’t

5) Declaration in compliance with 37 CFR 1.63

47(b) – Cannot Be Found

• Petition Requirements1) Petition fee ($130)2) Surcharge ($65 or $130) if the petition is

filed in response to a Notice to File Missing Parts

3) Last Known Address of the non-signing inventor [MPEP 409.03(e)]

- must be stated to be the last known address of the inventor

47(b) – Cannot Be Found, con’t

4) Proof that diligent efforts have been made to locate the non-signing inventor [MPEP 409.03(d)]- Acceptable Proof:a. copy of an envelope showing that a letter was sent to the last know address of the inventor and was returned as undeliverableb. affidavit setting forth facts and details regarding the efforts made to locate the non-signing inventor; signed by a person having first hand knowledge of the facts

47(b) – Cannot Be Found, con’t

6) Proof that the Rule 47 Applicant has sufficient proprietary interest in the subject matter to justify the filing of the application

- Acceptable Proof:a. copy of the employment agreementb. copy of an assignment agreementc. legal memorandum signed by an attorney

familiarwith the law of the jurisdiction stating that a court

of competent jurisdiction would, by the weight of the authority, award the title of the invention to the

Rule

47(b) – Cannot Be Found, con’t

7) Proof of irreparable damage- Acceptable Proof:- statement by the Rule 47(b) applicant

that the filing of the application is necessary to

preserve the rights of the parties

8) Declaration in compliance with 37 CFR 1.63

Thank you!