There are many reasons why an inventor might undergo a legal name change, whether as part of a marriage or divorce, as part of a gender transition, or out of a desire for a name that better reflects the inventor’s sense of self. Even though name changes are handed through state-level legal procedures, the United States Patent and Trademark Office (USPTO) has specific rules about using legal names that can result in costly delays or even an abandoned or invalidated patent if not followed. With the patent application process often taking several years, consistency of inventor naming and compliance with state-level rules about legal names is important to avoid issues down the road.
The ‘Legal Name’ Requirement
The USPTO requires that inventors provide their “legal names” when completing the application data sheet and the inventor’s oath or declaration (37 C.F.R. §§1.63, 1.76). The USPTO does not define “legal name” and since 2012 the USPTO explicitly moved away from a requirement for specific name forms, such as requiring both a family and given name (MPEP §602.08(b)).
“Legal Names” are defined under both state statute and common law. By statute, “legal names” are typically registered on a birth certificate or some other court document indicating a name change, such as that obtained in marriage, divorce, or through a court-ordered name change. In Washington, common law definitions of legal names lay out that “a person is free to adopt and use … any name … so long as it is not done for any fraudulent purposes and does not infringe upon the rights of others.” In Washington, one can assert a new legal name merely through use, but state recognition of the name typically requires a formal registration through the local district court. Because of the evidentiary issues with common law name changes, by default the state will refer to the legal name as indicated on a driver’s license, birth certificate, or passport. (See In re Resnover; People v. Palombi, 1-13-1590, 2015 WL 4040387, at *3 (Ill. App. Ct. June 30, 2015); In re Henshaw, A-0802-06T5, 2007 WL 3376225 (N.J. Super. Ct. App. Div. Nov. 15, 2007.)
While states cannot forbid someone from changing their name, most states require a multi-step procedure for name changes that can include a requirement for a court order or publication of the name change. Each of these extra steps can discourage people from changing their name and can potentially expose people to discrimination and other negative consequences.
Consequences of Using a Non-Registered ‘Legal Name’
In the context of intellectual property, the question of a person using multiple different names arose in Santronics, Inc. v. Core Industries. James Rattz, the inventor in the case, was granted a patent under the name “James Sirattz”. Rattz often used this name, especially because his wife disliked the name Rattz. When Santronics sued Core Industries for patent infringement, the defense argued that the patent was invalid because Sirattz was not Rattz’s legal name. The court held that “the patent was issued in the name of the inventor, as required” regardless of what was registered with the state, so long as Rattz had chosen the name “Sirattz” without fraudulent intent as part of a common law name change. Following the ruling, the parties settled.
Following Santronics, so long as the legal name submitted to the USPTO is not chosen for the purposes of fraud or other illegal activity, such as identity theft, that name should satisfy USPTO requirements. However, common law legal names place evidentiary burden on the applicant/assignee if an issued patent is challenged in court. While a common law legal name should satisfy the USPTO during prosecution, post-grant challenges could depend on proving a common law name change. In short, it is always safer to register a name change with state government.
The USPTO explicitly allows corrections and updates to names throughout the application process. For example, in In Re Application of Majid Kaemi, the USPTO abandoned the application arising from a mistake on the inventor’s oath or declaration that indicated the inventor’s name as “Kaemi”, rather than “Kazemi”—two years of prosecution wasted for want of a “z”. Fortunately, inventor name amendments—whether to correct a mistake, or due to the inventor taking a new name—can be accomplished by filing updated biographical information with the USPTO (37 C.F.R. §1.48(f)). Once a patent has issued, the process of changing the inventor’s name becomes more complicated. The procedure includes withdrawing the patent from issue and returning it to the examiner for another examination (MPEP 602.08(b)(III)(A)). The additional examination can risk new prior art being found and more fees. The USPTO explicitly prohibits corrections to inventor names when a party “changes their name after the patent issues” (MPEP 1481.02). As a result, if a name change is anticipated and the patent is close to issuing, it is important that the proper amendments are filed prior to paying the issue fee.
Connection to Copyright and Trademark Practice
Copyright and trademark applications are less stringent about legal naming, merely requiring “the name” of the relevant parties. For example, the copyright application explicitly allows the use of pseudonyms or anonymous registration. Even when a non-legal name is used and the application is not pseudonymous, so long as the discrepancy is not knowingly inaccurate and the inaccuracy would have resulted in a refusal of registration, an applicant’s copyright is not invalidated. Similarly, if an entity that owns a trademark undergoes a name change, they remain the owner of that trademark so long as the same entity was the owner of the trademark when filed. (See Department of Justice, F.B.I. v. Calspan Corp., 578 F.2d 295, 297 (C.C.P.A. 1978); Chien Ming Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458 (Fed. Cir. 1988).)