Can you add inventors to a continuation application?

continuation in part (“CIP”) Applications and Inventorship

In many cases, it may be desirable to file a new patent application that both relies on information disclosed in a previous patent application and includes new information that builds on the previous disclosure.  A Continuation in Part (CIP) application is designed for exactly such a purpose.  When filing a CIP application, it is common to add new inventors related to the new disclosure.  But, is it necessary to include the previous inventors as well?  

Inventor, Patent

The short answer is yes;

at least a subset of the inventors from the parent application should be included in the CIP application.

Understanding CIP Applications

A CIP application is filed during the lifetime of an earlier nonprovisional application (i.e., prior to the issue date of the nonprovisional application), and repeats some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the earlier nonprovisional application.  MPEP 201.08.  For a CIP application to make a valid priority claim, the application claiming priority must “name[] an inventor or joint inventor in the previously filed application.”   35 U.S.C. § 120.  

Joint Inventorship

But what happens when two inventions are similar, but the inventors were not physically collaborating on their efforts?  Joint inventorship does not require extensive collaboration between the inventors.  “Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.”  35 U.S.C. § 116.  Moreover, MPEP 2109.01 states that: It is not necessary that joint inventors physically work together on a project, and it is permissible for one inventor to “take a step at one time, the other an approach at different times.” (Monsanto Co. v. Kamp, 269 F. Supp. 818, 824, 154 USPQ 259, 262 (D.D.C. 1967)). However, “the statute neither states nor implies that two inventors can be ‘joint inventors’ if they have had no contact whatsoever and are completely unaware of each other’s work.” What is required is some “quantum of collaboration or connection.” In other words, “[f]or persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another’s suggestion at a meeting.” Kimberly-Clark Corp.v.Procter & Gamble Distrib. Co., 973 F.2d 911, 916-17, 23 USPQ2d 1921, 1925-26 (Fed. Cir. 1992); Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat. Inter. 1960) (“it is not necessary that the inventive concept come to both [joint inventors] at the same time”).

re-disclose the earlier nonprovisional application

Thus, when filing a CIP application, the CIP application should re-disclose at least a portion of the earlier nonprovisional application.  That disclosed portion of the earlier nonprovisional application should serve as the basis for the new material, and should make up at least a portion of the claims of the CIP application.  Based on this, the inventors of the earlier filed nonprovisional application who contributed to the portion of the earlier invention that is also include in the claims of the CIP application should be named as inventors in the CIP application.  Additionally, to file as a CIP application, there should be “some quantum of collaboration” between the inventors.  That is, while the inventors need not physically collaborate, the quantum of collaboration may be satisfied by working under common direction, attending common meetings about the same project, or even simply providing reports to one another regarding the status of a project.  

Kevin T. Bastuba, Vice Chair of IP

Kevin T. Bastuba, Esq.
Patent Attorney
Vice Chair of Intellectual Property
[email protected]

Kevin is a senior patent attorney at Founders Legal. Kevin focuses his practice on all aspects of patent prosecution.
In particular, Kevin specializes in preparing and executing strategies for obtaining domestic and international patent protection for clients’ inventions.  In addition to his experience preparing and prosecuting patent applications, Kevin has experience with post-grant proceedings before the U.S. Patent and Trademark Office.  Kevin also has experience working with inventors to help determine patentability and points of novelty of their inventions.
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