The Applicant Is Not Necessarily the Owner: Filing U.S. Patent Applications for Employee Inventions

Executive Summary: This article explains why, for employee inventions, naming the employer as the applicant under 35 U.S.C. § 118 and Rule 1.46 generally provides greater continuity and corporate control than naming the employee-inventor, particularly if the employee later leaves, becomes unavailable, or refuses to cooperate. Employer-applicant status allows the company to direct prosecution, appoint counsel, and, when the statutory requirements are satisfied, execute a substitute statement without depending on the former employee; however, it does not transfer ownership or cure a missing assignment. Companies should therefore obtain and record effective assignments, preserve evidence of assignment obligations, and complete patent-specific offboarding reviews while employees remain available. These ownership records also affect prior art because the exception under 35 U.S.C. § 102(b)(2)(C) turns on whether the relevant inventions were commonly owned or subject to assignment obligations to the same person by the claimed invention’s effective filing date, not on who was identified as the applicant.

I.              Introduction

When an employee develops a patentable invention, the company and its patent counsel must answer a deceptively simple question: who should be identified as the applicant in the U.S. patent application? The employee must be named as an inventor if the employee conceived claimed subject matter. But the employee does not necessarily have to be the applicant, and being named as the applicant does not necessarily mean that the employee owns the invention.

The America Invents Act permits an assignee, a person to whom the inventor is obligated to assign, and, in limited circumstances, a person with a sufficient proprietary interest to file as the applicant. 35 U.S.C. § 118; 37 C.F.R. § 1.46(a)–(b) (2026). That change allows an employer to place prosecution under corporate control from the beginning. It also creates an opportunity for three legally distinct concepts to become blurred: inventorship, applicant status, and ownership.

The distinction matters. Applicant status generally determines who acts before the U.S. Patent and Trademark Office. Ownership determines who holds the patent rights. Inventorship identifies the natural persons who conceived the claimed invention. None of those questions can safely be answered by looking only at the applicant field of an application data sheet. The same is true for prior art: whether an earlier company patent filing can be removed under 35 U.S.C. § 102(b)(2)(C) turns on actual common ownership or an enforceable obligation of assignment by the relevant date, not on whether the company or the employee was named as applicant.

The distinction becomes most concrete when the employee leaves the company. A departure does not erase inventorship, terminate a valid assignment, or necessarily prevent continued prosecution. It can, however, expose every step that was left dependent on future inventor cooperation: an unsigned declaration, an unexecuted assignment, an inventor-granted power of attorney, a continuation with changed inventorship, a later correction, or evidence that an assignment obligation existed at the effective filing date.

This article addresses post-AIA U.S. nonprovisional applications. Provisional applications, Patent Cooperation Treaty applications, national-stage applications, design applications, reissue applications, and applications governed by pre-AIA law can present additional issues.

II.           One Invention, Three Different Roles

Consider a familiar scenario. An Acme engineer develops a new control system in the course of an assigned research project. A public demonstration is scheduled for the next morning, so outside counsel must file immediately. The application must identify the engineer and any other actual joint inventors. Counsel must separately determine whether Acme or the inventors should be identified as the applicant and whether Acme already owns the invention.

Those are three different inquiries.

An inventor is an individual who conceived the subject matter of at least one claim. The Patent Act defines an inventor as an “individual,” and a corporation cannot be named as an inventor. 35 U.S.C. §§ 100(f), 115(a); Thaler v. Vidal, 43 F.4th 1207, 1211–13 (Fed. Cir. 2022). An employee does not stop being an inventor because the employee was paid to conduct research, used company equipment, or signed an assignment.

An applicant is the person making the application and acting as the principal before the USPTO. The default applicant is the inventor or all joint inventors, but the statute and rules allow certain noninventors to apply. 35 U.S.C. §§ 116, 118; 37 C.F.R. §§ 1.42, 1.45–1.46 (2026). When a company properly files under Rule 1.46, “applicant” refers to the company rather than the inventor. 37 C.F.R. § 1.42(b) (2026).

An assignee is a person or entity that has received ownership through an assignment. Patent rights initially vest in the inventor, and another party ordinarily obtains those rights through a valid conveyance. Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776, 785–87 (2011); 35 U.S.C. § 261. A company may therefore be the applicant without yet holding legal title if the inventor is under an enforceable obligation to assign. Conversely, an inventor can remain the applicant even after assigning the entire interest to the company.

Role	Principal function	May be a corporation?
Inventor	Identifies who conceived the claimed invention	No
Applicant	Makes and controls the application before the USPTO	Yes, if qualified under 35 U.S.C. § 118 and Rule 1.46
Assignee	Holds rights transferred through an assignment	Yes

The practical rule follows from this separation: an entry in the applicant-information section of an application data sheet is not a conveyance, and recording an assignment does not automatically change the applicant. MPEP §§ 325, 605.01 (9th ed. Rev. 01.2024, Nov. 2024).

III.        When the Employer May File as Applicant

Section 118 and Rule 1.46 recognize three routes for filing by someone other than the inventor. First, a person to whom the inventor has already assigned the invention may apply. Second, a person to whom the inventor is under an obligation to assign may apply. Third, a person who otherwise demonstrates a sufficient proprietary interest may apply on behalf of and as agent for the inventor after satisfying additional petition requirements. 35 U.S.C. § 118; 37 C.F.R. § 1.46(a)–(b) (2026).

The second category is particularly important for employee inventions. An employment agreement may require the employee to assign inventions within a defined scope. That obligation can permit the employer to file as applicant even when a separate, application-specific assignment has not yet been executed. But the employer’s eligibility to apply as an obligated assignee does not necessarily mean that legal title has already transferred. Rule 1.46 deliberately distinguishes an assignee from a person to whom the inventor is obligated to assign. 37 C.F.R. § 1.46(a), (b)(1) (2026).

An employee’s departure or refusal to cooperate does not necessarily prevent filing. If Acme already owns the invention or holds an enforceable obligation of assignment, Acme may file as the Rule 1.46 applicant without obtaining the employee’s signature on the filing papers. A missing inventor declaration also does not prevent a utility application from receiving a filing date. With a compliant application data sheet and the applicable surcharge, the declaration or a permitted substitute statement may be postponed until the application is otherwise in condition for allowance, but in all events must be filed no later than payment of the issue fee. 35 U.S.C. §§ 111(a)(3), 115(f), 118; 37 C.F.R. §§ 1.16(f), 1.53(f)(3), 1.64 (2026); MPEP § 601.01(a).

That flexibility is not a reason to defer the ownership work. Filing under an obligation to assign preserves a route for prosecution, but it does not convert an unperformed promise to assign into legal title. If the employee is still available, the company ordinarily should obtain an application-specific assignment and declaration while cooperation remains routine.

For an application filed under 35 U.S.C. § 111, the noninventor applicant must be identified in the applicant-information section of the application data sheet. 37 C.F.R. § 1.46(b) (2026). If the filing papers do not identify the company as a Rule 1.46 applicant, the record may initially reflect the inventors as applicants. The company can later seek to become the applicant, but it must submit a corrected application data sheet and establish its right to act under Rules 3.71 and 3.73. 37 C.F.R. §§ 1.46(c)(2), 3.71, 3.73 (2026); MPEP §§ 325, 605.01.

The employer also must hold or be entitled to the complete interest if it is to be the sole applicant. Suppose two people jointly invented a claimed system, one Acme employee has assigned to Acme, and an outside consultant neither assigned nor agreed to assign. Acme cannot solve the consultant problem by simply naming itself as sole applicant. Acme and the uncovered inventor may need to apply together unless the missing interest is first consolidated. MPEP § 605.01. The underlying ownership problem is consequential because, absent an assignment, each joint inventor generally holds an undivided interest and may practice or license the patent without the other owners’ consent. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460, 1466–68 (Fed. Cir. 1998).

IV.         Filing with the Employee-Inventor as Applicant

Filing with the employee-inventor as applicant is legally permissible even if the employee has assigned, or must assign, the invention to the employer. The employee-applicants execute the power of attorney, and each actual inventor executes the required oath or declaration unless a substitute statement is available. Where there are multiple applicant parties, each applicant generally must sign a power of attorney making the same appointment. 37 C.F.R. § 1.32(b)(4) (2026); MPEP § 402.

This path can be useful when a filing deadline arrives before the ownership record has been fully investigated. It avoids making a premature representation that a particular company is the proper assignee or obligated assignee. The same caution may be appropriate for an invention conceived before incorporation, a mixed employee-and-consultant team, an invention made during a corporate restructuring, or a situation in which the employment agreement names an entity different from the entity requesting the filing.

Naming the inventors as applicants does not prevent the employer from separately obtaining and recording an assignment. Nor does it prevent the patent from issuing in the employer’s name if the applicable assignment has been recorded and the required request is made. 35 U.S.C. § 152; 37 C.F.R. § 3.81(a) (2026). In other words, inventor-applicant status is not a declaration that the inventor will remain the owner.

The principal disadvantage is governance. The applicants are the principals who appoint counsel and control prosecution before the USPTO. An employee’s departure does not automatically terminate an existing inventor-signed power of attorney, so counsel may be able to continue ordinary prosecution while that authority remains effective. The vulnerability appears when the employer wants to replace counsel, revoke the existing power, or otherwise act as the principal. Recording an assignment does not automatically replace the inventor-applicants or revoke their power of attorney. The assignee must establish its ownership and become the applicant before conducting prosecution to the exclusion of the prior applicants. 37 C.F.R. §§ 1.36(a), 1.46(c)(2), 3.71(a), 3.73 (2026); MPEP §§ 325, 402.

Continuation practice can expose the same weakness. A power of attorney from a parent application may have effect in a continuing application if the required copy is filed, but not when the power was granted by the inventor and the continuing application names an inventor who was not named in the parent. Adding an inventor to a pending application can likewise result in loss of an inventor-granted power unless the added inventor supplies a consistent power of attorney. 37 C.F.R. § 1.32(d)–(e) (2026); MPEP § 402.02(a). A former employee who is unavailable or hostile can therefore turn what would have been a single corporate signature into a change-of-applicant proceeding and a separate chain-of-title showing.

Applicant status also determines who may execute a substitute statement. If the inventors are the applicants, the remaining joint inventor-applicants may sign for a joint inventor who refuses to execute the oath or cannot be found or reached, but a sole inventor-applicant cannot execute a substitute statement for himself or herself. A deceased or legally incapacitated inventor ordinarily must be represented through the routes specified in Rule 1.43 or by a proper noninventor applicant; the remaining joint inventors do not become that inventor’s legal representative. 37 C.F.R. §§ 1.43, 1.45(a), 1.64(a) (2026); MPEP §§ 409.01(a), 409.02, 604.

The difficulty is greater if the employer holds only a future promise to assign rather than present title. A later change from the inventor to the employer as applicant requires compliance with Rules 3.71 and 3.73, including an ownership showing. 37 C.F.R. §§ 1.46(c)(2), 3.71, 3.73(c) (2026); MPEP § 325. Naming the employer as the original Rule 1.46 applicant based on an enforceable obligation can avoid that later procedural hurdle, although it still does not transfer title.

V.            Filing with the Employer as Applicant

 

When the employer’s entitlement is clear, naming the employer as applicant usually produces the cleaner prosecution structure. The company is identified as the Rule 1.46 applicant in the application data sheet, and an authorized corporate representative executes the power of attorney. The company can then direct prosecution, manage continuations and divisionals, and replace counsel without collecting new powers from each inventor. 37 C.F.R. §§ 1.32, 1.46, 3.71 (2026); MPEP § 402.

This arrangement also provides continuity when employees leave or become uncooperative. Because the company is the applicant, an authorized corporate representative can appoint or replace prosecution counsel without a new power from the former employee. If an inventor has not executed the oath or declaration, the employer-applicant may execute a substitute statement when the inventor is deceased, legally incapacitated, has refused to execute the declaration, or cannot be found or reached after diligent effort. 35 U.S.C. § 115(d); 37 C.F.R. § 1.64(a) (2026).

Departure alone is not one of those grounds. A reachable former employee who has not refused should ordinarily be asked to review the application and execute the declaration. If the employee refuses, the file should preserve the request and refusal. If the employee cannot be found or reached, the file should document the reasonable channels used in the diligent effort. Although proof ordinarily is not submitted with the substitute statement, the USPTO directs applicants to retain proof of attempts to secure the inventor’s signature. The person executing the statement must review and understand the application, including the claims, and must be aware of the duty of disclosure. For a corporate applicant, the signer must have authority to act for the company; a prosecution power of attorney alone does not authorize outside counsel to execute the substitute statement. 37 C.F.R. § 1.64(b)–(c) (2026); MPEP § 604.

If a nonsigning inventor later joins by submitting a declaration, that act does not give the inventor authority to grant or revoke the power of attorney in a Rule 1.46 application. 37 C.F.R. § 1.64(f) (2026); MPEP §§ 402.02(a), 604. Naming the assignee of the entire interest as the original applicant can have a further downstream benefit: that assignee may execute the reissue oath even in a broadening reissue when the original application was filed under Rule 1.46 by the assignee of the entire interest. 37 C.F.R. § 1.175(c)(2) (2026); MPEP § 1410.

Employer-applicant status nevertheless creates its own risks. Counsel must identify the correct legal entity. A parent corporation, employing subsidiary, intellectual-property holding company, and commercial brand are not interchangeable. The relevant documents may assign inventions to one entity while the filing instructions name another. A merger, conversion, or asset transfer may also have moved some applications but not others.

The applicant designation cannot cure those defects. Naming Acme Holdings Inc. in the application data sheet does not transfer an invention owned by an employee or obligated to Acme Research LLC. It also does not fill a missing assignment from a consultant. At most, the designation asserts that the identified entity has one of the bases recognized by Rule 1.46. The ownership analysis must still be completed independently.

VI.         Employment Alone Does Not Transfer Patent Ownership

 

The most important substantive point is also the one most often missed: an employer does not automatically own every invention created by an employee. The Supreme Court has repeatedly treated the inventor as the initial owner unless an agreement or a narrow common-law doctrine provides otherwise. Stanford, 563 U.S. at 785–87; United States v. Dubilier Condenser Corp., 289 U.S. 178, 187–89 (1933).

An express written invention-assignment agreement is therefore the most reliable starting point. The agreement should be reviewed for its scope, governing law, effective dates, excluded inventions, post-employment provisions, cooperation obligations, and the legal identity of the recipient. Counsel should also determine whether it effects a present conveyance or merely creates a future contractual duty.

Federal Circuit decisions have distinguished language that presently assigns future inventions, such as “hereby assigns,” from language promising that an employee “will assign” or “agrees to assign” in the future. A present assignment can operate automatically when the covered invention comes into existence, while a promise to assign may require a later conveyance to transfer legal title. FilmTec Corp. v. Allied-Signal Inc., 939 F.2d 1568, 1572–73 (Fed. Cir. 1991); Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832, 841–42 (Fed. Cir. 2009), aff’d, 563 U.S. 776 (2011). The words should not be assessed in isolation, however; the agreement must be interpreted as a whole under the governing law. Omni MedSci, Inc. v. Apple Inc., 7 F.4th 1148, 1152, 1154, 1156–57 (Fed. Cir. 2021).

The Stanford dispute illustrates the stakes. Stanford’s agreement stated that the researcher “agree[d] to assign” inventions to the university, while a later agreement with Cetus stated that he “will assign and do[es] hereby assign” his rights to Cetus. The Federal Circuit concluded that the latter language effected a present assignment that took priority over Stanford’s later-obtained assignment. Stanford, 583 F.3d at 837, 841–42. The Supreme Court affirmed on the Bayh-Dole issue but expressly did not review the Federal Circuit’s construction of those agreements. Stanford, 563 U.S. at 784 n.2. The fact that Stanford prosecuted the patents did not repair the chain of title.

Common-law doctrines provide narrower protection. An employee specifically hired to solve a defined problem or to exercise inventive faculties may have a duty to assign the resulting invention. Standard Parts Co. v. Peck, 264 U.S. 52, 58–60 (1924). General employment in an engineering or research role, however, does not necessarily establish that the employee was “hired to invent” the particular subject matter. Dubilier, 289 U.S. at 187–90. When an employee invents using the employer’s time or resources but retains title, the employer may obtain only a nonexclusive “shop right” to practice the invention. Id. at 188–89. A shop right is not ownership and should not be treated as a routine basis for naming the employer as sole assignee-applicant or invoking § 102(b)(2)(C). Nor should patent counsel import copyright’s “work made for hire” doctrine into the patent-ownership analysis.

State law can further limit employee-invention provisions. California, for example, excludes certain inventions developed entirely on the employee’s own time without specified employer resources, subject to statutory exceptions. Cal. Lab. Code § 2870(a) (West 2026). The Federal Circuit has also refused to enforce an overbroad provision requiring assignment of qualifying post-employment inventions under California’s prohibition on restraints of trade. Whitewater West Indus., Ltd. v. Alleshouse, 981 F.3d 1045, 1051–57 (Fed. Cir. 2020). Other states have enacted their own limitations. The validity and scope of an employee’s obligation therefore require a state-law and fact-specific analysis rather than an assumption based on job title.

VII.      The Inventor’s Declaration Is Not an Assignment

 

Even when the employer is the applicant, the actual inventors ordinarily must execute an oath or declaration stating that they believe themselves to be the original inventor or joint inventor of the claimed invention and authorizing the application. 35 U.S.C. § 115(a)–(b); 37 C.F.R. § 1.63(a) (2026). Rule 1.46 expressly preserves that requirement for applications filed by an assignee or obligated assignee. 37 C.F.R. § 1.46(d) (2026).

The declaration does not convey title. It addresses inventorship and the inventor’s statutory representations. An assignment addresses ownership. The two functions can be combined in a single instrument if the document includes the required declaration statements and otherwise satisfies the applicable rules, but the legal functions remain distinct. 35 U.S.C. § 115(e); 37 C.F.R. § 1.63(e) (2026).

Similarly, a substitute statement is not simply a convenient alternative whenever collecting an inventor signature is slow. It is available only on specified grounds, including death, legal incapacity, refusal, or inability to find or reach the inventor after diligent effort. 35 U.S.C. § 115(d); 37 C.F.R. § 1.64(a) (2026). The filing record should document the applicable basis, particularly where refusal or diligent efforts may later be questioned.

The relevant refusal is a refusal to execute the inventor’s oath or declaration. A former employee’s refusal to sign an assignment, assist with foreign filings, answer technical questions, or provide testimony does not by itself authorize a substitute statement unless one of Rule 1.64’s stated conditions also exists. The substitute statement cures the missing oath or declaration; it does not transfer title or compel broader cooperation.

Collection of the declaration should therefore be treated as part of filing or employee offboarding rather than deferred indefinitely. The employee must have reviewed and understood the application, including the claims, before signing, so counsel should not seek a generic declaration untethered to an identifiable application. 37 C.F.R. § 1.63(c) (2026). Once a compliant declaration has been executed and filed, however, the USPTO generally may not require the inventor to repeat an equivalent statement for the same application or the resulting patent merely because the claims later change. 35 U.S.C. § 115(h)(2).

The sound practice is therefore a two-track closing. The prosecution track addresses inventorship, applicant identification, the application data sheet, power of attorney, and inventor declarations or substitute statements. The ownership track addresses the employment agreement, application-specific assignments, all co-inventor interests, the correct corporate assignee, recordation, foreign rights, continuation coverage, and later changes in title. Completing one track does not complete the other.

VIII.   When the Inventor Leaves, Cannot Be Reached, or Refuses to Cooperate

 

Not every departed-inventor problem is the same. A former employee may remain reachable and cooperative, may be genuinely unavailable after diligent effort, or may actively dispute the company’s rights. The filing rules address actual refusal and unavailability, not ordinary inconvenience. The safest portfolio is therefore one that does not depend on characterizing a difficult offboarding process as a statutory substitute for work that could have been completed earlier.

A.            Prosecution Authority and Title Can Diverge

Employer-applicant status is most valuable as a continuity device when title is not yet fully papered. Section 118 and Rule 1.46 permit a person holding an enforceable obligation of assignment to apply, even if a separate conveyance has not yet transferred legal title. 35 U.S.C. § 118; 37 C.F.R. § 1.46(a) (2026). By contrast, an employer that allowed the inventor to remain applicant and later wants to take control under Rules 3.71 and 3.73 generally must establish ownership. If the employment agreement merely promises a future assignment and the former employee refuses to execute it, the company may need to enforce the contract before it can complete the chain of title or act as the sole assignee-applicant.

The distinction between a present transfer and a promise to transfer becomes especially important after departure. Language effecting a present assignment can transfer covered rights automatically when the invention comes into being; language stating that rights “will be assigned” ordinarily does not. Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1580–81 (Fed. Cir. 1991); FilmTec Corp. v. Allied-Signal Inc., 939 F.2d 1568, 1572–73 (Fed. Cir. 1991). An instructive pre-AIA dispute shows the two tracks in practice: the university was able to pursue patent filings without the inventor’s cooperation but separately had to litigate to compel the promised assignment. Univ. of W. Va. Bd. of Trs. v. VanVoorhies, 278 F.3d 1288, 1292–99 (Fed. Cir. 2002). The modern substitute-statement procedure is different, but the lesson remains: the ability to prosecute without an inventor’s signature is not the same as ownership.

B.            Continuations and Inventorship Corrections

 

A former employee does not necessarily need to execute a new declaration for every continuation or divisional. A compliant oath, declaration, or substitute statement from the parent may be used in a continuing application if it was executed and filed in the parent and the required copy is submitted in the continuing application. 37 C.F.R. § 1.63(d)(1) (2026); MPEP § 602.05(a). A newly added inventor who did not execute a compliant statement in the parent, however, must provide an oath or declaration or be covered by a proper substitute statement. 37 C.F.R. §§ 1.48(b), 1.63(d)(3) (2026).

Claim amendments can change inventorship during prosecution. A pending application may be corrected under 35 U.S.C. § 116 and Rule 1.48 through a request, corrected application data sheet, and applicable fee. That procedure does not ordinarily require every originally named inventor to approve the correction, although a newly added inventor must satisfy the oath-or-substitute-statement requirement. 37 C.F.R. § 1.48(a)–(c) (2026); MPEP § 602.01(c)(1). Correcting inventorship does not itself consolidate ownership. If an added former employee retained rights, that person may retain an undivided interest notwithstanding the company’s applicant status. See Stanford, 563 U.S. at 785–87; Ethicon, 135 F.3d at 1460.

The problem becomes less forgiving after issuance. Administrative correction under § 256 and Rule 1.324 requires statements from the affected inventors and agreement from the relevant assignees. An uncooperative former employee can therefore prevent consensual correction through the USPTO, leaving a court-ordered correction under § 256(b) as a potentially more expensive route. 35 U.S.C. § 256(a)–(b); 37 C.F.R. § 1.324(b) (2026); MPEP § 1481.02. Inventorship should be revisited before allowance, particularly when claims were materially amended after the original filing.

C.            Preserve Evidence Before Cooperation Is Lost

 

An unavailable inventor does not automatically invalidate a patent or bar continued prosecution. The more common problem is evidentiary. Later disputes may require proof of conception, contribution to particular claims, the scope and timing of an assignment obligation, the origin of a disclosure, or the company’s entitlement to rely on an inventor statement. Inventorship challenges require demanding proof, and alleged co-inventor testimony ordinarily must be corroborated. BearBox LLC v. Lancium LLC, 125 F.4th 1101, 1117–19 (Fed. Cir. 2025). Contemporaneous invention disclosures, notebooks, design records, source repositories, emails, witness information, executed agreements, and claim-mapping memoranda can therefore be more reliable than attempting to reconstruct the record after a relationship has deteriorated.

Notice of departure should trigger a patent offboarding review. The company should inventory the employee’s invention disclosures and patent families, identify pending declarations and assignments, confirm the applicant and power-of-attorney records, preserve current contact information, determine whether planned claims or continuations may alter inventorship, and record the documents needed to establish the relevant corporate chain. The objective is not to remove the former employee from the record. It is to prevent prosecution authority, title, and historical proof from depending on voluntary cooperation after employment ends.

IX.         Applicant Status and the Availability of Prior Art

The distinction among inventor, applicant, and owner also matters when a company’s earlier patent filings are cited against a later application. The controlling principle is straightforward: applicant designation does not itself change the prior-art universe.

A.            Section 102(a)(2) Looks to Inventorship, Not Applicant Identity

 

Section 102(a)(2) addresses certain U.S. patents, U.S. patent application publications, and qualifying WIPO publications that were effectively filed before the effective filing date of the claimed invention and “name[] another inventor.” 35 U.S.C. § 102(a)(2), (d). The inquiry concerns the inventive entity, not the applicant named in the application data sheet.

An earlier patent document naming exactly the same inventive entity ordinarily does not satisfy the “names another inventor” requirement. If even one inventor differs, however, the inventive entities are different and the earlier document can potentially qualify under § 102(a)(2), subject to the statutory exceptions. MPEP § 2154.01(c). Changing the later application’s applicant from the employee to the employer does not alter that analysis because it does not change inventorship.

B.            The Common-Ownership or Assignment-Obligation Exception

Section 102(b)(2)(C) removes a disclosure that otherwise qualifies under § 102(a)(2) when the subject matter disclosed and the claimed invention, no later than the claimed invention’s effective filing date, were owned by the same person or subject to an obligation of assignment to the same person. 35 U.S.C. § 102(b)(2)(C). Properly invoked, the exception prevents the affected subject matter from supporting either an anticipation rejection under § 102 or an obviousness rejection under § 103. MPEP §§ 717.02(b), 2154.02(c).

The operative facts are historical ownership and enforceable assignment obligations. If the employees remain the applicants but both inventions were owned by, or subject to enforceable assignment obligations to, Acme by the relevant date, § 102(b)(2)(C) may apply. If Acme is named as applicant but did not own the relevant interests and lacked a valid assignment obligation by that date, the applicant label does not create the exception.

This point also explains why the Rule 1.46 and § 102(b)(2)(C) inquiries can overlap without becoming identical. An employment agreement creating an obligation to assign may both authorize the employer to file as applicant and support the prior-art exception. But neither the application data sheet nor applicant status based only on “sufficient proprietary interest” establishes common ownership or an obligation to assign within the meaning of § 102(b)(2)(C).

C.            Timing Can Be Dispositive

The ownership or enforceable obligation must exist no later than the effective filing date of the claimed invention. 35 U.S.C. § 102(b)(2)(C). Because effective filing date is claim-specific, the relevant date may be the filing date of a provisional or other priority application that supports the claim. See 35 U.S.C. § 100(i).

A confirmatory assignment executed later is not necessarily fatal if a binding obligation already existed by the effective filing date. Conversely, a post-filing assignment cannot retroactively create the exception when no qualifying ownership or obligation existed at the critical time. A present statement that the applications are now commonly owned is insufficient. Nor will a moral or otherwise unenforceable expectation to assign suffice. MPEP § 717.02(a).

This timing rule should affect portfolio intake. Counsel evaluating an internal § 102(a)(2) reference should identify the effective filing date of each affected claim, the dates and scope of the employee agreements, the entity to which each invention was assigned or obligated, and whether any application-specific assignment merely confirmed a preexisting duty or first created the relevant obligation.

An employee’s later departure does not change whether a qualifying assignment obligation existed on the effective filing date, but it can make the historical facts harder to prove. The company should preserve the executed employment agreement and amendments, their effective dates, the employee’s dates of employment, invention disclosures, application-specific assignments, and any merger or succession documents connecting the named recipient to the present owner. A later confirmatory assignment can evidence an earlier obligation; it cannot create one retroactively. MPEP § 717.02(a). The record therefore should not depend on obtaining a declaration from a former employee after a § 102(a)(2) rejection arises.

D.            Common Ownership Must Be Complete and Correctly Aligned

The USPTO treats common ownership as complete ownership of the relied-upon subject matter and complete ownership of the claimed invention by the same person or identical ownership group. Less than 100 percent ownership generally does not qualify. MPEP § 717.02(a).

That requirement creates recurring corporate traps. An earlier reference owned by a parent and a later invention owned by a subsidiary are not commonly owned merely because the companies are affiliated. Different subsidiaries are likewise different legal persons. An uncovered consultant or university co-inventor can prevent the interests from aligning. A license ordinarily does not create common ownership when the licensor retains the basic ownership rights. Id. Only the subject matter actually relied upon in the rejection needs to satisfy the exception, however; other disclosures in the same reference may remain available.

E.            The Exception Is Powerful but Narrow

Section 102(b)(2)(C) applies only to prior art under § 102(a)(2). It is not limited by a one-year grace period, but it does not remove a document that independently qualifies as prior art under § 102(a)(1). MPEP § 2154.02(c). If an earlier company patent or application was publicly available before the later claim’s effective filing date, its publication or issue may remain prior art under § 102(a)(1) notwithstanding common ownership.

The exception also does not eliminate statutory or obviousness-type double patenting based on the claims of the earlier patent document. The document may remain relevant as evidence of enablement, inherency, or the state of the art even when it cannot be used as prior art under §§ 102 or 103. MPEP §§ 717.02(b), 2154.02(c).

Scenario	Named applicant	Likely § 102(b)(2)(C) consequence
Both inventions were covered by enforceable obligations to Acme by the effective filing date	Employee	Exception may apply despite inventor-applicant status
Acme is named applicant, but no qualifying ownership or obligation existed by the effective filing date	Acme	Applicant designation alone does not establish the exception
A confirmatory assignment was signed later, but a valid obligation existed earlier	Either	Later signature does not necessarily defeat the exception
The first assignment obligation arose only after the effective filing date	Either	Later assignment generally cannot cure the problem
Parent owns the earlier reference; subsidiary owns the later invention	Employer entity	Affiliation alone generally is insufficient
The earlier application published before the later claim’s effective filing date	Either	The document may remain § 102(a)(1) prior art

F.            Invoking the Exception at the USPTO

 

The exception ordinarily is invoked through a clear and conspicuous statement that the relied-upon subject matter and the claimed invention were owned by, or subject to an obligation of assignment to, the same person no later than the effective filing date. 37 C.F.R. § 1.104(c)(4)(i) (2026); MPEP § 717.02(a). A practitioner authorized under Rule 1.33(b) can sign the statement even when the inventors remain the applicants. Thus, employer-applicant status is not required to present the exception.

The statement is required even if assignments have been recorded. Supporting agreements, assignments, declarations, or court decisions ordinarily need not accompany the statement unless independent evidence creates a material doubt. MPEP § 717.02(a)–(b). Counsel nevertheless should confirm and preserve the factual basis before making the statement, particularly when the relevant inventor has left and may not assist later. Employer-applicant status, a post-critical-date assignment, or common ownership only at the time of the response does not establish the historical fact that § 102(b)(2)(C) requires. This submission should not be confused with a Rule 1.130 declaration, which principally implements the inventor-originated and prior-public-disclosure exceptions under § 102(b)(1)(A)–(B) and § 102(b)(2)(A)–(B). See 37 C.F.R. § 1.130 (2026); MPEP §§ 717.01, 717.02.

Section 102(c) provides a separate path for certain work performed under a qualifying written joint research agreement. The agreement must have been in effect on or before the effective filing date, the claimed invention must have resulted from activities within its scope, and the application must identify or be amended to identify the parties. 35 U.S.C. §§ 100(h), 102(c); 37 C.F.R. §§ 1.71(g), 1.104(c)(4)(ii) (2026). Applicant identity again is not the controlling fact.

There is one limited procedural effect worth noting. When two copending applications have a common applicant, a common inventor, or a common assignee, the USPTO may make a provisional § 102(a)(2) or § 103 rejection based on the earlier, still-unpublished application. MPEP § 2154.01(d). Naming the employer as applicant in both applications may make that relationship apparent sooner. This can affect when the provisional rejection appears, but it does not change the ultimate statutory status of the reference after § 102(b)(2)(C) is properly invoked.

X.            Ownership Documentation and Applicant Designation Are Parallel Tracks

A company should not choose between accurate applicant papers and accurate ownership papers. It needs both. The prosecution file should identify the correct inventors and the legally supportable applicant, include an effective power of attorney, and contain the required declarations or substitute statements. The ownership file should establish the chain from every inventor to the intended entity.

For employee inventions, that ownership file ordinarily should include the operative employment agreement and an application-specific assignment. The application-specific document can confirm the patent family, foreign rights, continuation and divisional coverage, the right to claim priority, and the inventor’s continuing duty to assist. It also provides a clean record for diligence even where a present-assignment clause arguably transferred rights automatically.

The timing of that papering is operationally important. A cooperation covenant may provide a contractual remedy if a former employee refuses to sign, but enforcing it can add delay and expense. The more reliable course is to obtain a present, application-specific assignment while the employee remains available and to draft it expressly to cover the application, its priority rights, continuations, divisionals, reissues, foreign counterparts, and other intended family members.

Continuation-in-part applications require particular attention. An assignment associated with a parent application generally carries through to a continuation or divisional as to common subject matter, but it does not automatically transfer rights in new matter first disclosed in a continuation-in-part. MPEP § 306. Separate recordation against a child application also produces a clearer public chain. Naming the employer as applicant can simplify prosecution and issuance, but it cannot substitute for a conveyance broad enough to reach the child application’s subject matter.

Assignments should be recorded promptly. Section 261 requires assignments to be in writing and can subordinate an unrecorded assignment to a later purchaser or mortgagee for value without notice unless the assignment is recorded within three months or before the later transaction. 35 U.S.C. § 261. USPTO recordation is important notice and chain-of-title practice, but it is ministerial and does not adjudicate whether the underlying document is valid. 37 C.F.R. § 3.54 (2026); MPEP § 317.03.

Missing former-employee papers become especially consequential in financing, acquisition, licensing, and enforcement diligence. If an omitted inventor retained an ownership interest, that co-owner may ordinarily practice or license the patent without the company’s consent and ordinarily must join an infringement action. 35 U.S.C. § 262; Ethicon, 135 F.3d at 1460, 1467–68. Applicant designation and USPTO recordation do not cure a defective transfer. A portfolio whose title depends on obtaining a hostile former employee’s signature is therefore harder to transact and enforce even if prosecution has continued without interruption.

The same separation applies to fee status. An inventor cannot manufacture small-entity eligibility by remaining the named applicant when the inventor has assigned or is obligated to assign rights to an entity that does not qualify. Small- and micro-entity determinations turn on the actual rights, licenses, and assignment obligations, not the label in the applicant field. 37 C.F.R. §§ 1.27(a), 1.29 (2026); MPEP §§ 509.02, 509.04.

XI.         Counsel Should Also Clarify Who the Client Is

When the company retains prosecution counsel but employees are named as applicants, the engagement and communications should make clear whom counsel represents. The inventor’s status as an applicant does not necessarily make the inventor an individual client, but the prosecution record can create confusion if the distinction is not explained.

The employee should understand that the inventor declaration, assignment, and power of attorney serve different functions. If the employee and employer disagree about inventorship, ownership, compensation, assignment scope, or the disposition of rights, counsel should assess whether the interests have diverged and whether continued representation is permissible. See 37 C.F.R. § 11.107(a)–(b) (2026); Model Rules of Pro. Conduct r. 1.13(f) (Am. Bar Ass’n 2024).

XII.      Conclusion

The choice between an employee-inventor applicant and an employer-assignee applicant is not merely cosmetic. It determines who formally directs prosecution and can materially affect administrative continuity. But it does not change who invented the claimed subject matter, does not itself transfer ownership, and does not determine whether an earlier patent filing is prior art.

When the employer’s entitlement and corporate identity are clear, naming the employer as the Rule 1.46 applicant usually provides the cleanest structure. The company should nevertheless obtain and record assignments, preserve the employee agreements establishing any preexisting obligations, confirm that every co-inventor interest is covered, and audit the relevant ownership as of each claim’s effective filing date.

A former employee’s unavailability does not ordinarily defeat a portfolio that was properly structured while cooperation remained available. More often, it reveals whether prosecution authority, assignment coverage, inventorship records, and historical ownership evidence were secured before they became contested.

The most reliable formulation is therefore simple: inventorship identifies the humans who conceived the claimed invention; applicant status identifies who acts before the USPTO; ownership identifies who holds the rights; and § 102(b)(2)(C) turns on ownership or enforceable assignment obligations, not the applicant label.