Bay Area Technology Law Group Explains Recent Changes to Signature Requirements under US Patent Law

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One of the provisions of the new patent law reform bill (HR1249) that has recently taken effect is a change to the requirement that the original inventor sign the patent application. Bay Area Technology Law Group explains how this will affect patent litigation.

Bay Area Tech Law explains recently enacted changes to US patent law.

This amendment to the US patent laws could greatly streamline patent filing, particularly on behalf of companies that experience significant employee turnover

The America Invents Act (AIA), recently signed into law, made a number of updates to US patent law. The expert patent attorneys of Bay Area Technology Law Group point to one important change to patent law that took immediate effect: the longstanding policy that the original inventor must sign the patent application has been changed to allow an assignee with sufficient proprietary interest the right to file a patent application without the inventor’s signature[35 U.S.C. §118]. This change brings US patent law more in line with patent laws in most other nations.

“From the inception of US patent laws, is has been a fundamental tenet that only the true and original inventor can file an application by signing an oath attesting to inventorship,” explains Malcolm Wittenberg, an intellectual property attorney at Bay Area Technology Law group. He explains that 35 U.S.C. §115 calls for the oath being made by the applicant asserting that he believes himself to be the original and first inventor of the subject being claimed.

The previously existing US patent law did provide for the filing of a patent application without the inventor’s signature, but only in a few instances: in the event of death or incapacity [35 U.S.C. §117], when an inventor refuses to execute an application, or when the inventor cannot be found or reached after diligent effort [35 U.S.C. §118]. Despite these exceptions, Wittenberg points out, the procedure to file an application without the signature of the inventor has been a difficult and time-consuming process.

As noted in 37 C.F.R §1.47, if an inventor refuses to join in an application for patent or cannot be found or reached, the entity filing the application must prove that a diligent effort was made to procure the appropriate signature, a petition must be filed including proof of the pertinent facts, the payment of the fee and an indication of the last known address of the non-signing inventor. The petition must also include a showing that the filing of the application without the inventor’s signature is necessary to preserve the rights of the parties or prevent irreparable damage. Once such a petition is made, the US Patent and Trademark Office will send a notice of the filing of the application to all inventors who have not joined in the application at the addresses provided in the petition and will publish notices of the filing of the application in the journal of the USPTO, the Official Gazette.

In order to streamline this difficult process, the new amendment to 35 U.S.C. §118 includes the provision that “a person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.” This provision virtually eliminates the need to participate in the cumbersome process of tracking down the inventor, and is similar to patent law in most foreign countries.

“This amendment to the US patent laws could greatly streamline patent filing, particularly on behalf of companies that experience significant employee turnover,” notes Wittenberg. “Although it would be important for such companies to establish employment agreements with their inventor-employees committing them to assign rights to inventions created on behalf of their employers, no longer will such companies be require to track down former employees in order to comply with the need to procure their signatures as a condition to the filing of applications at the USPTO.”

For more information about changes to the inventor signature requirement under the new patent law, or for information about any of Bay Area Technology Law Group’s products or services, call (415) 868-4682 or visit

About Bay Area Technology Law Group
Bay Area Technology Law Group is a law firm focusing exclusively on the practice of intellectual property law.

The firm's intellectual property, patent and trademark attorneys, Malcolm B. Wittenberg, Bill Wigert and Nathan Koenig have, between them, almost 100 years of experience in this area of the law. The firm is capable of working in virtually any field of technology and with offices in San Francisco and Sonoma County, is dedicated to servicing the intellectual property needs of the San Francisco Bay Area.


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Malcolm Wittenberg
Bay Area Technology Law Group
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