Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 151 – Content of the Statements (1)
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.
MPEP 2100 – Patentability (1)
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.
However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“
The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.
To learn more:
MPEP 2136.05 – Overcoming A Rejection Under Pre – Aia 35 U.S.C. 102(E) (1)
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.
However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“
The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.
To learn more:
MPEP 400 – Representative of Applicant or Owner (2)
What happens if an unavailable joint inventor refuses to sign an oath or declaration?
If an unavailable joint inventor refuses to sign an oath or declaration, the applicant may file a petition under 37 CFR 1.183 to waive the requirement for that inventor’s signature. According to MPEP 409.03(a):
‘If a nonsigning inventor refuses to sign the oath or declaration or cannot be reached, the oath or declaration under 37 CFR 1.63 by the remaining joint inventor(s) must state that the nonsigning inventor is either refused to sign or could not be reached after diligent effort to contact him or her.’
The petition should include evidence of the attempts made to contact the unavailable inventor and any responses received. The Office will then determine whether to grant the petition based on the circumstances presented.
To learn more:
A substitute statement is a document that can be used in place of an oath or declaration in patent applications involving deceased or legally incapacitated inventors. According to MPEP 409.01(a):
See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
The substitute statement can be executed by:
- A legal representative of the deceased or incapacitated inventor
- An assignee or obligated assignee
- A party with sufficient proprietary interest in the invention
This allows the application process to continue even when the inventor is unable to provide an oath or declaration due to death or incapacity. The substitute statement must comply with the requirements set forth in 37 CFR 1.64.
To learn more:
Patent Law (15)
What happens if an unavailable joint inventor refuses to sign an oath or declaration?
If an unavailable joint inventor refuses to sign an oath or declaration, the applicant may file a petition under 37 CFR 1.183 to waive the requirement for that inventor’s signature. According to MPEP 409.03(a):
‘If a nonsigning inventor refuses to sign the oath or declaration or cannot be reached, the oath or declaration under 37 CFR 1.63 by the remaining joint inventor(s) must state that the nonsigning inventor is either refused to sign or could not be reached after diligent effort to contact him or her.’
The petition should include evidence of the attempts made to contact the unavailable inventor and any responses received. The Office will then determine whether to grant the petition based on the circumstances presented.
To learn more:
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.
However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“
The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.
To learn more:
An oath is a sworn statement made before a person authorized to administer oaths, while a declaration is a written statement that can be used in lieu of an oath. According to MPEP 602, “A declaration may be submitted in lieu of an oath in any document filed in the Office provided the declaration complies with the requirements of 37 CFR 1.68.” Declarations are often preferred because they don’t require appearing before an official and are easier to process electronically.
To learn more:
When is a new oath or declaration required for a continuation-in-part application?
For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:
‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’
This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.
To learn more:
Provisional and nonprovisional patent applications have several key differences:
- Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.”
- Oath or Declaration: Nonprovisional applications require an oath or declaration, while provisional applications do not. The MPEP notes, “Furthermore, no oath or declaration is required.”
- Examination: Nonprovisional applications undergo substantive examination, while provisional applications do not.
- Information Disclosure Statement: Provisional applications should not include an information disclosure statement, unlike nonprovisional applications. The MPEP states, “Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement.”
- Cover Sheet: Provisional applications require a specific cover sheet with identifying information, which is not required for nonprovisional applications.
For more details on provisional applications, refer to MPEP § 201.04.
To learn more:
When adding a new inventor to a patent application, additional documentation is required. According to 37 CFR 1.48(b):
An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.
This means that any newly added inventor must submit either an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64. The specific requirements for these documents depend on the application’s filing date. For applications filed on or after September 16, 2012, refer to MPEP § 602.01(a) for oath or declaration requirements and MPEP § 604 for substitute statement requirements.
To learn more:
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.
A substitute statement is a document that can be used in place of an oath or declaration in patent applications involving deceased or legally incapacitated inventors. According to MPEP 409.01(a):
See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
The substitute statement can be executed by:
- A legal representative of the deceased or incapacitated inventor
- An assignee or obligated assignee
- A party with sufficient proprietary interest in the invention
This allows the application process to continue even when the inventor is unable to provide an oath or declaration due to death or incapacity. The substitute statement must comply with the requirements set forth in 37 CFR 1.64.
To learn more:
Yes, the filing fee, oath or declaration, and claims can be submitted after the initial filing of a nonprovisional application. However, there are specific rules and time limits for doing so:
- These items must be submitted within the period specified by the USPTO, usually in a Notice to File Missing Parts.
- A surcharge may be required for late submission.
- Failure to submit these items within the specified period may result in the application being abandoned.
The MPEP states: The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
It’s important to note that while these items can be submitted later, it’s generally best practice to include them with the initial filing to avoid potential issues or delays.
To learn more:
A new oath or declaration is required for a continuation-in-part (CIP) application, and it must acknowledge the duty to disclose information material to patentability as defined in 37 CFR 1.56.
MPEP 602.02 states: ‘A new oath or declaration is required in a continuation-in-part application, which includes subject matter not disclosed in the prior nonprovisional application. See MPEP § 201.08 and § 602.’
The new oath or declaration in a CIP application should:
- Identify the application as a continuation-in-part
- Acknowledge the duty to disclose material information
- Cover the new subject matter introduced in the CIP
- Be signed by all inventors, including any new inventors added due to the new subject matter
It’s important to ensure that the new oath or declaration complies with all requirements of 37 CFR 1.63 to avoid potential issues during prosecution.
To learn more:
Can an oath or declaration from a provisional application be used for a nonprovisional application?
No, an oath or declaration from a provisional application cannot be used for a subsequent nonprovisional application. The MPEP 602.05 states:
‘The oath or declaration filed in a provisional application is not sufficient for the purposes of a nonprovisional application filed under 35 U.S.C. 111(a) or a national stage application filed under 35 U.S.C. 371, even if the nonprovisional application claims the benefit of the provisional application under 35 U.S.C. 119(e).’
This means that when converting a provisional application to a nonprovisional application or filing a nonprovisional application claiming priority to a provisional, a new oath or declaration must be submitted. This requirement ensures that the inventors properly declare their inventorship for the nonprovisional application, which may contain additional or modified content compared to the provisional application.
To learn more:
The use of a copy of an oath or declaration in a continuation-in-part (CIP) application depends on the filing date of the CIP application:
- For CIP applications filed on or after September 16, 2012:
- A copy of an oath or declaration from the prior application may be used.
- However, the oath or declaration must comply with the requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012.
- A new oath or declaration may be necessary if the prior application was filed before September 16, 2012.
- For CIP applications filed before September 16, 2012:
- Generally, a new oath or declaration is required.
- The copy of the oath or declaration from the prior application is typically not sufficient due to the new matter introduced in a CIP.
According to MPEP 602.05(a): For applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64.
It’s important to ensure that the oath or declaration covers all the subject matter in the CIP application, including any new matter added.
To learn more:
If a copy of an oath or declaration from a prior application is filed after the filing date of a continuation or divisional application, you should take the following steps:
- Include a cover letter with the oath or declaration.
- In the cover letter, identify the application number of the continuation or divisional application.
- Indicate in the cover letter that the submitted oath or declaration is a copy from a prior application.
- Label the copy of the oath or declaration with the application number of the continuation or divisional application.
According to MPEP 602.05: If such a copy of the oath or declaration is filed after the filing date of the continuation or divisional application and an application number has been assigned to the continuation or divisional application (see 37 CFR 1.5(a)), the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application. The cover letter should also indicate that the oath or declaration submitted is a copy of the oath or declaration from a prior application to avoid the oath or declaration being incorrectly matched with the prior application file.
These steps help ensure that the oath or declaration is correctly associated with the new application and not mistakenly matched with the prior application file.
To learn more:
According to the MPEP 602.06, if an inventor understands English, it is preferable to use English for oaths and declarations. The manual states:
“If the individual comprehends the English language, he or she should preferably use it.”
This preference for English, when possible, likely helps streamline the patent application process and reduces the need for translations. However, it’s important to note that the primary requirement is for the inventor to understand the language used, whether it’s English or another language.
To learn more:
For continuation or divisional applications filed before September 16, 2012, a new oath or declaration is generally not required if certain conditions are met. According to pre-AIA 37 CFR 1.63(d):
A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
- The prior nonprovisional application contained a proper oath or declaration
- The continuation or divisional application was filed by all or fewer than all inventors named in the prior application
- The specification and drawings contain no new matter
- A copy of the executed oath or declaration from the prior application is submitted
However, a new oath or declaration is required if naming an inventor not named in the prior application. The MPEP states: A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
To learn more:
Patent Procedure (14)
What happens if an unavailable joint inventor refuses to sign an oath or declaration?
If an unavailable joint inventor refuses to sign an oath or declaration, the applicant may file a petition under 37 CFR 1.183 to waive the requirement for that inventor’s signature. According to MPEP 409.03(a):
‘If a nonsigning inventor refuses to sign the oath or declaration or cannot be reached, the oath or declaration under 37 CFR 1.63 by the remaining joint inventor(s) must state that the nonsigning inventor is either refused to sign or could not be reached after diligent effort to contact him or her.’
The petition should include evidence of the attempts made to contact the unavailable inventor and any responses received. The Office will then determine whether to grant the petition based on the circumstances presented.
To learn more:
An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.
However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“
The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.
To learn more:
An oath is a sworn statement made before a person authorized to administer oaths, while a declaration is a written statement that can be used in lieu of an oath. According to MPEP 602, “A declaration may be submitted in lieu of an oath in any document filed in the Office provided the declaration complies with the requirements of 37 CFR 1.68.” Declarations are often preferred because they don’t require appearing before an official and are easier to process electronically.
To learn more:
When is a new oath or declaration required for a continuation-in-part application?
For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:
‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’
This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.
To learn more:
Provisional and nonprovisional patent applications have several key differences:
- Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.”
- Oath or Declaration: Nonprovisional applications require an oath or declaration, while provisional applications do not. The MPEP notes, “Furthermore, no oath or declaration is required.”
- Examination: Nonprovisional applications undergo substantive examination, while provisional applications do not.
- Information Disclosure Statement: Provisional applications should not include an information disclosure statement, unlike nonprovisional applications. The MPEP states, “Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement.”
- Cover Sheet: Provisional applications require a specific cover sheet with identifying information, which is not required for nonprovisional applications.
For more details on provisional applications, refer to MPEP § 201.04.
To learn more:
When adding a new inventor to a patent application, additional documentation is required. According to 37 CFR 1.48(b):
An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.
This means that any newly added inventor must submit either an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64. The specific requirements for these documents depend on the application’s filing date. For applications filed on or after September 16, 2012, refer to MPEP § 602.01(a) for oath or declaration requirements and MPEP § 604 for substitute statement requirements.
To learn more:
A substitute statement is a document that can be used in place of an oath or declaration in patent applications involving deceased or legally incapacitated inventors. According to MPEP 409.01(a):
See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
The substitute statement can be executed by:
- A legal representative of the deceased or incapacitated inventor
- An assignee or obligated assignee
- A party with sufficient proprietary interest in the invention
This allows the application process to continue even when the inventor is unable to provide an oath or declaration due to death or incapacity. The substitute statement must comply with the requirements set forth in 37 CFR 1.64.
To learn more:
Yes, the filing fee, oath or declaration, and claims can be submitted after the initial filing of a nonprovisional application. However, there are specific rules and time limits for doing so:
- These items must be submitted within the period specified by the USPTO, usually in a Notice to File Missing Parts.
- A surcharge may be required for late submission.
- Failure to submit these items within the specified period may result in the application being abandoned.
The MPEP states: The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
It’s important to note that while these items can be submitted later, it’s generally best practice to include them with the initial filing to avoid potential issues or delays.
To learn more:
A new oath or declaration is required for a continuation-in-part (CIP) application, and it must acknowledge the duty to disclose information material to patentability as defined in 37 CFR 1.56.
MPEP 602.02 states: ‘A new oath or declaration is required in a continuation-in-part application, which includes subject matter not disclosed in the prior nonprovisional application. See MPEP § 201.08 and § 602.’
The new oath or declaration in a CIP application should:
- Identify the application as a continuation-in-part
- Acknowledge the duty to disclose material information
- Cover the new subject matter introduced in the CIP
- Be signed by all inventors, including any new inventors added due to the new subject matter
It’s important to ensure that the new oath or declaration complies with all requirements of 37 CFR 1.63 to avoid potential issues during prosecution.
To learn more:
Can an oath or declaration from a provisional application be used for a nonprovisional application?
No, an oath or declaration from a provisional application cannot be used for a subsequent nonprovisional application. The MPEP 602.05 states:
‘The oath or declaration filed in a provisional application is not sufficient for the purposes of a nonprovisional application filed under 35 U.S.C. 111(a) or a national stage application filed under 35 U.S.C. 371, even if the nonprovisional application claims the benefit of the provisional application under 35 U.S.C. 119(e).’
This means that when converting a provisional application to a nonprovisional application or filing a nonprovisional application claiming priority to a provisional, a new oath or declaration must be submitted. This requirement ensures that the inventors properly declare their inventorship for the nonprovisional application, which may contain additional or modified content compared to the provisional application.
To learn more:
The use of a copy of an oath or declaration in a continuation-in-part (CIP) application depends on the filing date of the CIP application:
- For CIP applications filed on or after September 16, 2012:
- A copy of an oath or declaration from the prior application may be used.
- However, the oath or declaration must comply with the requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012.
- A new oath or declaration may be necessary if the prior application was filed before September 16, 2012.
- For CIP applications filed before September 16, 2012:
- Generally, a new oath or declaration is required.
- The copy of the oath or declaration from the prior application is typically not sufficient due to the new matter introduced in a CIP.
According to MPEP 602.05(a): For applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64.
It’s important to ensure that the oath or declaration covers all the subject matter in the CIP application, including any new matter added.
To learn more:
If a copy of an oath or declaration from a prior application is filed after the filing date of a continuation or divisional application, you should take the following steps:
- Include a cover letter with the oath or declaration.
- In the cover letter, identify the application number of the continuation or divisional application.
- Indicate in the cover letter that the submitted oath or declaration is a copy from a prior application.
- Label the copy of the oath or declaration with the application number of the continuation or divisional application.
According to MPEP 602.05: If such a copy of the oath or declaration is filed after the filing date of the continuation or divisional application and an application number has been assigned to the continuation or divisional application (see 37 CFR 1.5(a)), the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application. The cover letter should also indicate that the oath or declaration submitted is a copy of the oath or declaration from a prior application to avoid the oath or declaration being incorrectly matched with the prior application file.
These steps help ensure that the oath or declaration is correctly associated with the new application and not mistakenly matched with the prior application file.
To learn more:
According to the MPEP 602.06, if an inventor understands English, it is preferable to use English for oaths and declarations. The manual states:
“If the individual comprehends the English language, he or she should preferably use it.”
This preference for English, when possible, likely helps streamline the patent application process and reduces the need for translations. However, it’s important to note that the primary requirement is for the inventor to understand the language used, whether it’s English or another language.
To learn more:
For continuation or divisional applications filed before September 16, 2012, a new oath or declaration is generally not required if certain conditions are met. According to pre-AIA 37 CFR 1.63(d):
A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
- The prior nonprovisional application contained a proper oath or declaration
- The continuation or divisional application was filed by all or fewer than all inventors named in the prior application
- The specification and drawings contain no new matter
- A copy of the executed oath or declaration from the prior application is submitted
However, a new oath or declaration is required if naming an inventor not named in the prior application. The MPEP states: A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
To learn more: