# Presentation: 062436

## Rule 47 Petitions

- Beverly Flanagan
- Supervisory 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

**Notes:**
47(b) – if one inventor has signed, Rule 47(a) is appropriate rather than 47(b); petition decision will state that it was treated as a 47(a)

## Two “Types” of Petition

- Non-Signing inventor **refuses **to sign
- Non-Signing inventor **cannot be found**

## 47(a) – Refuses to Sign

**Petition Requirements**
- 1) *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)]

**Notes:**
Customarily receives mail address can be a business address

## 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 papers
- 		b. 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 refusal
- 		b. oral refusal – ***affidavit*** providing facts and
- 		details of the refusal signed by the person to
- 		whom the refusal was made

**Notes:**
First-hand knowledge – attorney assistant made the attempts to procure the inventor’s signature, but the affidavit is signed by the attorney; incorrect

## 47(a) – Refuses to Sign, con’t

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

**Notes:**
If no response, state so in affidavit

## 47(a) – Cannot Be Found

**Petition Requirements**
- 1) *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 undeliverable
- 		b. 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

**Notes:**
PTO will not require that entire application sent to inventor who cannot be found; letter is sufficient (due to proprietary nature of application materials)
A phone call is not sufficient
The fact that a non-signing inventor is out of town or on vacation is not a reason for filing under 37 CFR 1.47; applicants can purchase extensions of time up to 5 months to comply with a Notice to File Missing Parts

## 47(a) – Cannot Be Found, con’t

- 	5) *Declaration in compliance with 37 CFR 1.63*

## 47(b) – Refuses to Sign

**Petition Requirements**
- 1) *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 refusal
- 		b. oral refusal – ***affidavit*** providing facts and
- 		details of the refusal signed by the person to
- 		whom 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 agreement**
- 		b. copy of an **assignment agreement**

**Notes:**
a. If the employment agreement had embedded in it an agreement to assign all inventions to the company, government entity, etc.

## 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 Rule
- 		47(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 Requirements**
**	**1) *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 undeliverable
- 		b. 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 agreement**
- 		b. copy of an **assignment agreement**
- 		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 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!