A registered practitioner filed a design patent application on December 30, 2003. The application was filed with an inventor-executed declaration naming Jon Jones as the sole inventor, who has not assigned the invention and is not under an obligation to assign his invention. The filing receipt was recently received, indicating that the application will be published on Thursday, July 1, 2004. In reviewing the filing receipt the practitioner realizes that the typed name of the inventor contained a typographical error (an “h” was missing) and that the correct spelling was John Jones. Which of the following would be the course of action at the least expense to correct the error in accordance with the patent laws, rules and procedures as related in the MPEP?
Explanation
Answer: C - See MPEP § 605.04(b), which states “Except for correction of a typographical or transliteration error in the spelling of an inventor's name, a request to have the name changed to the signed version or any other corrections in the name of the inventor(s) will not be entertained...When a typographical or transliteration error in the spelling of an inventor's name is discovered during pendency of an application, a petition is not required, nor is a new oath or declaration under 37 CFR 1.63 needed. The U.S.[PTO] should simply be notified of the error and reference to the notification paper will be made on the previously filed oath or declaration by the Office.” (A), (B) and (D) could result in the spelling of Jon’s name being corrected in USPTO records, but would do so at a higher cost to applicant, and therefore neither one is the most correct answer. Furthermore, (A) is also not correct in that if a request to add John Jones as an inventor was to be filed, another request (and fee) to delete Jon Jones would be required. (B) is wrong because a petition under 37 CFR § 1.182 is not required if the error in the name is a typographical error, and the facts specify that the error in the spelling of “John” as “Jon” is a typographical error. (D) is not correct because not only would filing a continuation create an additional expensive, but filing a new application could also delay examination. (E) is not correct because pursuant to 37 CFR § 1.2, business with the Office is to be conducted in writing, and, even more importantly, because “it is improper for anyone, including counsel, to alter, rewrite, or partly fill in any part of the application, including the oath or declaration, after execution of the oath or declaration by the applicant.” MPEP § 605.04(a).
