Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 150-Statements to DOE and NASA (1)
When the USPTO makes a formal request for a property rights statement in accordance with 42 U.S.C. 2182 (DOE) or 51 U.S.C. 20135 (NASA), the applicant has a 30-day statutory period to respond. There is no provision for an extension of this 30-day time period.
As stated in MPEP 150, “If no proper and timely statement is received, the application will be held abandoned and the applicant so notified. Such applications may be revived under the provisions of 37 CFR 1.137.”
MPEP 151 - Content of the Statements (2)
The word “applicant” in the Atomic Energy Act and NASA Act is construed by the USPTO to mean the inventor(s), an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter. In the ordinary situation, the statements must be signed by:
- The inventor or joint inventors
- An assignee
- An obligated assignee
- A person who otherwise shows sufficient proprietary interest in the matter
This is consistent with the fact that these parties would be most knowledgeable of the “full facts concerning the circumstances under which such invention was made” (42 U.S.C. 2457) or “full facts surrounding the making or conception of the invention or discovery” (42 U.S.C. 2182).
The statement regarding work with the Atomic Energy Commission or NASA should be in the form of an oath or declaration. The following is an acceptable format, assuming no government funds or considerations were involved in the invention’s conception or making:
I (We) [Name(s)] citizens of [Country] residing at [Address] declare: That I (we) made and conceived the invention described and claimed in patent application number [Application Number] filed in the United States of America on [Date] titled [Title].
[Include statement regarding employment and/or relevant facts.]
The invention or discovery was not made or conceived in the course of, or in connection with, or under the terms of any contract, subcontract or arrangement entered into with or for the benefit of the United States Atomic Energy Commission or its successors Energy Research and Development Administration or the Department of Energy.
The invention was not made under nor is there any relationship of the invention to the performance of any work under any contract of the National Aeronautics and Space Administration.
The statement must be signed by all the inventors.
Patent Law (3)
The word “applicant” in the Atomic Energy Act and NASA Act is construed by the USPTO to mean the inventor(s), an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter. In the ordinary situation, the statements must be signed by:
- The inventor or joint inventors
- An assignee
- An obligated assignee
- A person who otherwise shows sufficient proprietary interest in the matter
This is consistent with the fact that these parties would be most knowledgeable of the “full facts concerning the circumstances under which such invention was made” (42 U.S.C. 2457) or “full facts surrounding the making or conception of the invention or discovery” (42 U.S.C. 2182).
When the USPTO makes a formal request for a property rights statement in accordance with 42 U.S.C. 2182 (DOE) or 51 U.S.C. 20135 (NASA), the applicant has a 30-day statutory period to respond. There is no provision for an extension of this 30-day time period.
As stated in MPEP 150, “If no proper and timely statement is received, the application will be held abandoned and the applicant so notified. Such applications may be revived under the provisions of 37 CFR 1.137.”
The statement regarding work with the Atomic Energy Commission or NASA should be in the form of an oath or declaration. The following is an acceptable format, assuming no government funds or considerations were involved in the invention’s conception or making:
I (We) [Name(s)] citizens of [Country] residing at [Address] declare: That I (we) made and conceived the invention described and claimed in patent application number [Application Number] filed in the United States of America on [Date] titled [Title].
[Include statement regarding employment and/or relevant facts.]
The invention or discovery was not made or conceived in the course of, or in connection with, or under the terms of any contract, subcontract or arrangement entered into with or for the benefit of the United States Atomic Energy Commission or its successors Energy Research and Development Administration or the Department of Energy.
The invention was not made under nor is there any relationship of the invention to the performance of any work under any contract of the National Aeronautics and Space Administration.
The statement must be signed by all the inventors.