Question 6
Domain 5: Patent Ownership, Infringement, and EthicsA patent application is filed naming Inventor A. Later, it is discovered that Inventor B also contributed to the conception of the claimed invention. What should be done?
Correct answer: B
Explanation
35 U.S.C. § 116 allows correction when an application names the wrong inventors or omits a joint inventor. Because Inventor B “contributed to the conception of the claimed invention,” B must be added through a petition to correct inventorship rather than filing a new application.
Why each option is right or wrong
A. Abandon the application and refile
B. File a petition to correct inventorship under 35 U.S.C. § 116
35 U.S.C. § 116 governs joint inventors in a patent application and expressly permits correction when an application omits a person who was a true inventor of the claimed subject matter. Because Inventor B contributed to conception, B must be added by petition to correct inventorship; the USPTO requires the petition, the required statements from the inventors, and the applicable fee under 37 C.F.R. § 1.48, rather than treating the omission as a new filing.
C. Do nothing, because only one inventor is required
D. File a new provisional application