Inventor’s Oath or Declaration in Application Filed On or After September 16, 2012
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USPTO MPEP › Chapter 0600 - Parts, Form, and Content of Application › MPEP § 602.01(a)
Text
[Editor Note: See
MPEP § 602.01(b)
for information
pertaining to an inventor's oath or declaration in applications filed before
September 16, 2012.]
35 U.S.C. 115
Inventor’s oath or declaration.
(a) NAMING THE INVENTOR; INVENTOR’S OATH OR
DECLARATION.—An application for patent that is filed under
section
111(a)
or commences the national stage under
section
371
shall include, or be amended to include, the name
of the inventor for any invention claimed in the application. Except as
otherwise provided in this section, each individual who is the inventor or a
joint inventor of a claimed invention in an application for patent shall
execute an oath or declaration in connection with the application.
(b) REQUIRED STATEMENTS.—An oath or declaration
under subsection (a) shall contain statements that—
(1) the application was made or was
authorized to be made by the affiant or declarant; and
(2) such individual believes himself or
herself to be the original inventor or an original joint inventor of a
claimed invention in the application.
(c) ADDITIONAL REQUIREMENTS.—The Director may
specify additional information relating to the inventor and the invention
that is required to be included in an oath or declaration under subsection
(a).
(d) SUBSTITUTE STATEMENT.—
(1) IN GENERAL.—In lieu of executing an oath
or declaration under subsection (a), the applicant for patent may
provide a substitute statement under the circumstances described in
paragraph (2) and such additional circumstances that the Director may
specify by regulation.
(2) PERMITTED CIRCUMSTANCES.—A substitute
statement under paragraph (1) is permitted with respect to any
individual who—
(A) is unable to file the oath or
declaration under subsection (a) because the individual—
he applicant for patent may
provide a substitute statement under the circumstances described in
paragraph (2) and such additional circumstances that the Director may
specify by regulation.
(2) PERMITTED CIRCUMSTANCES.—A substitute
statement under paragraph (1) is permitted with respect to any
individual who—
(A) is unable to file the oath or
declaration under subsection (a) because the individual—
(i) is deceased;
(ii) is under legal incapacity;
or
(iii) cannot be found or reached
after diligent effort; or
(B) is under an obligation to assign
the invention but has refused to make the oath or declaration
required under subsection (a).
(3) CONTENTS.—A substitute statement under
this subsection shall—
(A) identify the individual with
respect to whom the statement applies;
(B) set forth the circumstances
representing the permitted basis for the filing of the
substitute statement in lieu of the oath or declaration under
subsection (a); and
(C) contain any additional
information, including any showing, required by the
Director.
(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT OF
RECORD.—An individual who is under an obligation of assignment of an
application for patent may include the required statements under subsections
(b) and (c) in the assignment executed by the individual, in lieu of filing
such statements separately.
(f) TIME FOR FILING.—The applicant for patent
shall provide each required oath or declaration under subsection (a),
substitute statement under subsection (d), or recorded assignment meeting
the requirements of subsection (e) no later than the date on which the issue
fee for the patent is paid.
s
(b) and (c) in the assignment executed by the individual, in lieu of filing
such statements separately.
(f) TIME FOR FILING.—The applicant for patent
shall provide each required oath or declaration under subsection (a),
substitute statement under subsection (d), or recorded assignment meeting
the requirements of subsection (e) no later than the date on which the issue
fee for the patent is paid.
(g) EARLIER-FILED APPLICATION CONTAINING REQUIRED
STATEMENTS OR SUBSTITUTE STATEMENT.—
(1) EXCEPTION.—The requirements under this
section shall not apply to an individual with respect to an
application for patent in which the individual is named as the
inventor or a joint inventor and that claims the benefit under
section 120
,
121
,
365(c)
, or
386(c)
of the filing of an earlier-filed
application, if—
(A) an oath or declaration meeting the
requirements of subsection (a) was executed by the individual
and was filed in connection with the earlier-filed
application;
(B) a substitute statement meeting the
requirements of subsection (d) was filed in connection with the
earlier filed application with respect to the individual; or
(C) an assignment meeting the
requirements of subsection (e) was executed with respect to the
earlier-filed application by the individual and was recorded in
connection with the earlier-filed application.
(2) COPIES OF OATHS, DECLARATIONS,
STATEMENTS, OR ASSIGNMENTS.—Notwithstanding paragraph (1), the
Director may require that a copy of the executed oath or declaration,
the substitute statement, or the assignment filed in connection with
the earlier-filed application be included in the later-filed
application.
tion by the individual and was recorded in
connection with the earlier-filed application.
(2) COPIES OF OATHS, DECLARATIONS,
STATEMENTS, OR ASSIGNMENTS.—Notwithstanding paragraph (1), the
Director may require that a copy of the executed oath or declaration,
the substitute statement, or the assignment filed in connection with
the earlier-filed application be included in the later-filed
application.
(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; FILING
ADDITIONAL STATEMENTS.—
(1) IN GENERAL.—Any person making a
statement required under this section may withdraw, replace, or
otherwise correct the statement at any time. If a change is made in
the naming of the inventor requiring the filing of 1 or more
additional statements under this section, the Director shall establish
regulations under which such additional statements may be filed.
(2) SUPPLEMENTAL STATEMENTS NOT REQUIRED.—If
an individual has executed an oath or declaration meeting the
requirements of subsection (a) or an assignment meeting the
requirements of subsection (e) with respect to an application for
patent, the Director may not thereafter require that individual to
make any additional oath, declaration, or other statement equivalent
to those required by this section in connection with the application
for patent or any patent issuing thereon.
(3) SAVINGS CLAUSE.—A patent shall not be
invalid or unenforceable based upon the failure to comply with a
requirement under this section if the failure is remedied as provided
under paragraph (1).
(i) ACKNOWLEDGMENT OF PENALTIES.—Any declaration or
statement filed pursuant to this section shall contain an acknowledgment
that any willful false statement made in such declaration or statement is
punishable under
section 1001 of title 18
by fine or imprisonment of not more than 5 years, or both.
37 CFR 1.63 Inventor's oath or declaration.
the failure is remedied as provided
under paragraph (1).
(i) ACKNOWLEDGMENT OF PENALTIES.—Any declaration or
statement filed pursuant to this section shall contain an acknowledgment
that any willful false statement made in such declaration or statement is
punishable under
section 1001 of title 18
by fine or imprisonment of not more than 5 years, or both.
37 CFR 1.63 Inventor's oath or declaration.
(a) The inventor, or each individual who is a
joint inventor of a claimed invention, in an application for patent must
execute an oath or declaration directed to the application, except as
provided for in
§ 1.64
. An oath or
declaration under this section must:
(1) Identify the inventor or joint inventor
executing the oath or declaration by his or her legal name;
(2) Identify the application to which it is
directed;
(3) Include a statement that the person
executing the oath or declaration believes the named inventor or joint
inventor to be the original inventor or an original joint inventor of
a claimed invention in the application for which the oath or
declaration is being submitted; and
(4) State that the application was made or
was authorized to be made by the person executing the oath or
declaration.
(b) Unless the following information is supplied
in an application data sheet in accordance with
§
1.76
, the oath or declaration must also identify:
(1) Each inventor by his or her legal name;
and
(2) A mailing address where the inventor
customarily receives mail, and residence, if an inventor lives at a
location which is different from where the inventor customarily
receives mail, for each inventor.
Unless the following information is supplied
in an application data sheet in accordance with
§
1.76
, the oath or declaration must also identify:
(1) Each inventor by his or her legal name;
and
(2) A mailing address where the inventor
customarily receives mail, and residence, if an inventor lives at a
location which is different from where the inventor customarily
receives mail, for each inventor.
(c) A person may not execute an oath or declaration
for an application unless that person has reviewed and understands the
contents of the application, including the claims, and is aware of the duty
to disclose to the Office all information known to the person to be material
to patentability as defined in
§ 1.56
. There is no
minimum age for a person to be qualified to execute an oath or declaration,
but the person must be competent to execute, i.e., understand, the document
that the person is executing.
(d)
(1) A newly executed oath or declaration
under
§ 1.63
, or
substitute statement under
§ 1.64
, is not
required under
§§ 1.51(b)(2)
and
1.53(f)
, or under
§§ 1.497
and
1.1021(d)
, for an
inventor in a continuing application that claims the benefit under
35 U.S.C. 120
,
121
,
365(c)
, or
386(c)
in compliance with
§
1.78
of an earlier-filed application, provided
that an oath or declaration in compliance with this section, or
substitute statement under
§ 1.64
, was
executed by or with respect to such inventor and was filed in the
earlier-filed application, and a copy of such oath, declaration, or
substitute statement showing the signature or an indication thereon
that it was executed, is submitted in the continuing application.
-filed application, provided
that an oath or declaration in compliance with this section, or
substitute statement under
§ 1.64
, was
executed by or with respect to such inventor and was filed in the
earlier-filed application, and a copy of such oath, declaration, or
substitute statement showing the signature or an indication thereon
that it was executed, is submitted in the continuing application.
(2) The inventorship of a continuing
application filed under
35 U.S.C. 111(a)
is the inventor or joint inventors specified in the application data
sheet filed before or concurrently with the copy of the inventor's
oath or declaration from the earlier-filed application. If an
application data sheet is not filed before or concurrently with the
copy of the inventor's oath or declaration from the earlier-filed
application, the inventorship is the inventorship set forth in the
copy of the inventor's oath or declaration from the earlier-filed
application, unless it is accompanied by a statement signed pursuant
to
§ 1.33(b)
stating
the name of each inventor in the continuing application.
(3) Any new joint inventor named in the
continuing application must provide an oath or declaration in
compliance with this section, except as provided for in
§ 1.64
.
(e)
(1) An assignment may also serve as an oath
or declaration required by this section if the assignment as
executed:
(i) Includes the information and
statements required under paragraphs (a) and (b) of this
section; and
(ii) A copy of the assignment is
recorded as provided for in part 3 of this chapter.
(2) Any reference to an oath or declaration
under this section includes an assignment as provided for in this
paragraph.
lso serve as an oath
or declaration required by this section if the assignment as
executed:
(i) Includes the information and
statements required under paragraphs (a) and (b) of this
section; and
(ii) A copy of the assignment is
recorded as provided for in part 3 of this chapter.
(2) Any reference to an oath or declaration
under this section includes an assignment as provided for in this
paragraph.
(f) With respect to an application naming only one
inventor, any reference to the inventor's oath or declaration in this
chapter includes a substitute statement executed under
§
1.64
. With respect to an application naming more than
one inventor, any reference to the inventor's oath or declaration in this
chapter means the oaths, declarations, or substitute statements that have
been collectively executed by or with respect to all of the joint inventors,
unless otherwise clear from the context.
(g) An oath or declaration under this section,
including the statement provided for in paragraph (e) of this section, must
be executed (i.e., signed) in accordance either with
§
1.66
or with an acknowledgment that any willful false
statement made in such declaration or statement is punishable under
18
U.S.C. 1001
by fine or imprisonment of not more than
five (5) years, or both.
(h) An oath or declaration filed at any time
pursuant to
35 U.S.C. 115(h)(1)
will
be placed in the file record of the application or patent, but may not
necessarily be reviewed by the Office. Any request for correction of the
named inventorship must comply with
§ 1.48
in an application
and
§
1.324
in a patent.
I.
IDENTITY OF INVENTOR(S), APPLICATION, AND REQUIRED STATEMENTS
The inventor, or each individual who is a joint
inventor of a claimed invention, in an application for patent (other than a
provisional application) must execute an oath or declaration directed to the
application, except as provided for in
37 CFR 1.64
. See
37 CFR
1.63(a)
and
35 U.S.C. 115
in an application
and
§
1.324
in a patent.
I.
IDENTITY OF INVENTOR(S), APPLICATION, AND REQUIRED STATEMENTS
The inventor, or each individual who is a joint
inventor of a claimed invention, in an application for patent (other than a
provisional application) must execute an oath or declaration directed to the
application, except as provided for in
37 CFR 1.64
. See
37 CFR
1.63(a)
and
35 U.S.C. 115
. An oath or
declaration must: (1) identify the inventor or joint inventor executing the oath
or declaration by their legal name; (2) identify the application to which it is
directed; (3) include a statement the person executing the oath or declaration
believes the named inventor or joint inventors to be the original inventor or an
original joint inventor of a claimed invention in the application for which the
oath or declaration is being submitted; and (4) state that the application was
made or authorized to be made by the person executing the oath or declaration.
Items (3) and (4) above are requirements of
35 U.S.C. 115(a) and
(b)
.
A.
Inventor Name And Mailing Address
The requirements that an oath or declaration must
identify the inventor or joint inventor executing the oath or declaration by
their legal name and identify the application to which it is directed are
necessary for the Office to ensure compliance with the requirement of
35 U.S.C. 115(a)
. Specifically,
35 U.S.C.
115(a)
requires that each individual who is the inventor
or a joint inventor of a claimed invention in an application for patent has
executed an oath or declaration in connection with the application (except as
provided for in
35 U.S.C. 115
). See
MPEP § 602.08(b)
for additional information
pertaining to inventor names
e compliance with the requirement of
35 U.S.C. 115(a)
. Specifically,
35 U.S.C.
115(a)
requires that each individual who is the inventor
or a joint inventor of a claimed invention in an application for patent has
executed an oath or declaration in connection with the application (except as
provided for in
35 U.S.C. 115
). See
MPEP § 602.08(b)
for additional information
pertaining to inventor names.
Unless such information is supplied in an
application data sheet in accordance with
37 CFR
1.76
, the oath or declaration must also identify: (1)
each inventor by their legal name; (2) a mailing address where the inventor or
each joint inventor customarily receives mail; and (3) a residence for each
inventor or joint inventor who lives at a location which is different from
where the inventor or joint inventor customarily receives mail. See
37 CFR
1.63(b)
.
For nonprovisional international design
applications,
37 CFR 1.1021(d)(3)
provides that the requirement in
37 CFR 1.63(b)
to identify
each inventor by their legal name, mailing address, and residence, if an
inventor lives at a location which is different from the mailing address, will
be considered satisfied by the presentation of such information in the
international design application prior to international registration.
See also
MPEP §
602.08(a)
for additional details regarding inventor
bibliographic information.
If applicant files an application data sheet
(ADS) that identifies each inventor by their legal name, in accordance with
37 CFR
1.76
, the applicant is not required to name each inventor
in a single oath or declaration. This permits each joint inventor to execute an
oath or declaration stating only that the joint inventor executing the oath or
declaration is an original joint inventor of the claimed invention in the
application for which the oath or declaration is being submitted. To be in
accordance with
37 CFR 1.76
, the
application data sheet must be signed in compliance with
37 CFR
1.33(b)
th or declaration. This permits each joint inventor to execute an
oath or declaration stating only that the joint inventor executing the oath or
declaration is an original joint inventor of the claimed invention in the
application for which the oath or declaration is being submitted. To be in
accordance with
37 CFR 1.76
, the
application data sheet must be signed in compliance with
37 CFR
1.33(b)
. An unsigned application data sheet will be
treated only as a transmittal letter.
B.
Identification Of Application
See
MPEP §
602.08(c)
for the minimum information necessary to
identify the application to which an oath or declaration under
37 CFR
1.63
is directed.
C.
Required Statements
An oath or declaration under
37 CFR
1.63
in an application filed on or after September 16,
2012 is no longer required to contain the “reviewed and understands” clause and
“duty to disclose” clause of
pre-AIA 37 CFR 1.63(b)(2) and
(b)(3)
. However,
37 CFR 1.63
still requires
that a person executing an oath or declaration review and understand the
contents of the application, and be aware of the duty to disclose under
37 CFR
1.56
. See
37 CFR 1.63(c)
. There is no
minimum age for a person to be qualified to execute an oath or declaration, but
the person must be competent to execute (i.e., understand) the document that
the person is executing.
II.
ASSIGNMENT-STATEMENT AS OATH OR DECLARATION
37 CFR
1.63(e)
implements the provisions of
35 U.S.C.
115(e)
. An assignment may also serve as an oath or
declaration required by
37 CFR 1.63
if the assignment:
(1) includes the information and statements required under
37 CFR 1.63(a) and
ration, but
the person must be competent to execute (i.e., understand) the document that
the person is executing.
II.
ASSIGNMENT-STATEMENT AS OATH OR DECLARATION
37 CFR
1.63(e)
implements the provisions of
35 U.S.C.
115(e)
. An assignment may also serve as an oath or
declaration required by
37 CFR 1.63
if the assignment:
(1) includes the information and statements required under
37 CFR 1.63(a) and
(b)
; and (2) a copy of the assignment is recorded as
provided for in 37 CFR part 3. The assignment, including the information and
statements required under
37 CFR 1.63(a) and (b)
, must
be executed by the individual who is under the obligation of assignment. Any
reference to an oath or declaration includes an assignment as provided for in
37 CFR
1.63(e)
.
Applicants should be mindful that
37 CFR
3.31
requires a conspicuous indication, such as by use of a
check-box on the assignment cover sheet, to alert the Office that an assignment
submitted with an application is being submitted for a dual purpose: recording in
the assignment database, such as to support a power of attorney, and for use in
the application as the inventor’s oath or declaration. Assignments cannot be
recorded unless an application number is provided against which the assignment is
to be recorded. When filing an application on paper, if an assignment is submitted
for recording along with the application, the assignment is separated from the
paper application after the application is assigned an application number and is
forwarded to the Assignment Recordation Branch for recording in its database. The
assignment does not become part of the application file. If the applicant
indicates that an assignment-statement is also an oath or declaration, the Office
will scan the assignment into the Image File Wrapper (IFW) file for the
application before forwarding it to the Assignment Recordation Branch
cation number and is
forwarded to the Assignment Recordation Branch for recording in its database. The
assignment does not become part of the application file. If the applicant
indicates that an assignment-statement is also an oath or declaration, the Office
will scan the assignment into the Image File Wrapper (IFW) file for the
application before forwarding it to the Assignment Recordation Branch.
For USPTO patent electronic filing system filing of
application papers, the USPTO patent electronic filing system does not accept
assignments for recording purposes when filing an application. Assignments
submitted via the USPTO patent electronic filing system will be made of record in
the application, and will not be forwarded to the Assignment Recordation Branch
for recordation by the Office. Recording of assignments may only be done
electronically in EPAS (Electronic Patent Assignment System). If an applicant
files the assignment-statement for recording via EPAS and utilizes the check-box,
the Office will place a copy of the assignment-statement in the application file.
III.
EXECUTION OF INVENTOR’S OATH OR DECLARATION
With respect to an application naming more than one
inventor, any reference to the inventor’s oath or declaration in 37 CFR chapter I
means the oaths, declarations, or substitute statements that have been
collectively executed by or with respect to all of the joint inventors, unless it
is otherwise clear from the context. Thus, any requirement in 37 CFR chapter I for
the inventor’s oath or declaration with respect to an application naming more than
one inventor is met if an oath or declaration under
37 CFR
1.63
, an assignment-statement under
37 CFR
1.63(e)
, or a substitute statement under
37 CFR
1.64
executed by or with respect to each joint inventor is
filed. See
37 CFR 1.63(f)
otherwise clear from the context. Thus, any requirement in 37 CFR chapter I for
the inventor’s oath or declaration with respect to an application naming more than
one inventor is met if an oath or declaration under
37 CFR
1.63
, an assignment-statement under
37 CFR
1.63(e)
, or a substitute statement under
37 CFR
1.64
executed by or with respect to each joint inventor is
filed. See
37 CFR 1.63(f)
.
An oath or declaration under
37 CFR
1.63
, including the assignment-statement provided for in
37 CFR
1.63(e)
, must be executed (i.e., signed) in accordance
either with
37 CFR 1.66
, or with an acknowledgement that any willful
false statement made in such declaration or statement is punishable under
18 U.S.C.
1001
by fine or imprisonment of not more than five (5)
years, or both. See
37 CFR 1.63(g)
and
35
U.S.C. 115(i)
. The inventor’s oath or declaration must be
executed (i.e., signed) by the inventor or the joint inventors, unless the
inventor’s oath or declaration is a substitute statement under
37 CFR
1.64
, which must be signed by the applicant, or an
assignment-statement under
37 CFR 1.63(e)
, which must be
signed by the inventor who is under the obligation of assignment of the patent
application.
See
MPEP §
602.08(b)
for additional information regarding the
execution of the inventor’s oath or declaration.
See
35 U.S.C. 115(g)
,
37 CFR
1.63(d)
and
MPEP §
602.05(a)
regarding the use of copies of inventor’s
oaths or declarations in continuing applications.
35
U.S.C. 115(h)(1)
provides that any person making a statement
under this section may at any time “withdraw, replace, or otherwise correct the
statement at any time.”
37 CFR 1.63(h)
provides that
an oath or declaration filed at any time pursuant to
35 U.S.C.
115(h)(1)
will be placed in the file record of the
application or patent, but may not necessarily be reviewed by the Office.
IV.
FORMS
Forms PTO/AIA/01 through PTO/AIA/11 may be used when
submitting the inventor’s oath or declaration in an application filed on or after
September 16, 2012
ement at any time.”
37 CFR 1.63(h)
provides that
an oath or declaration filed at any time pursuant to
35 U.S.C.
115(h)(1)
will be placed in the file record of the
application or patent, but may not necessarily be reviewed by the Office.
IV.
FORMS
Forms PTO/AIA/01 through PTO/AIA/11 may be used when
submitting the inventor’s oath or declaration in an application filed on or after
September 16, 2012. These forms and an "AIA Inventor's Oath or Declaration Quick
Reference Guide" are available on the USPTO website at
www.uspto.gov/PatentForms
.
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