Rule 47 petitions
Advertisement
This presentation is the property of its rightful owner.
1 / 21

Rule 47 Petitions PowerPoint PPT Presentation

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)

Download Presentation

Rule 47 Petitions

An Image/Link below is provided (as is) to download presentation

Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author.While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server.


- - - - - - - - - - - - - - - - - - - - - - - - - - E N D - - - - - - - - - - - - - - - - - - - - - - - - - -

Presentation Transcript


Rule 47 petitions

Rule 47 Petitions

Beverly Flanagan

Supervisory Petitions Examiner

(703) 305-7202


47 a and 47 b the difference

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

Two “Types” of Petition

  • Non-Signing inventor refuses to sign

  • Non-Signing inventor cannot be found


47 a refuses to sign

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)]


47 a refuses to sign con t

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 t1

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


47 a refuses to sign con t2

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


47 a cannot be found

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

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


47 a cannot be found con t1

47(a) – Cannot Be Found, con’t

5) Declaration in compliance with 37 CFR 1.63


47 b refuses to sign

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

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 t1

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 t2

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


47 b refuses to sign con t3

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 t4

47(b) – Refuses to Sign, con’t

5) Declaration in compliance with 37 CFR 1.63


47 b cannot be found

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

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 t1

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 t2

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

Thank you!


  • Login