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 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 200 - Types and Status of Application; Benefit and Priority (8)
What is the required oath or declaration for a divisional application?
For a divisional application, a new oath or declaration is generally required. However, there are exceptions:
- If the application is filed on or after September 16, 2012, a copy of the oath or declaration from the prior nonprovisional application may be used, provided that it complies with 37 CFR 1.63, 1.64, or 1.67 for the divisional application.
- If the divisional application was filed before September 16, 2012, and the prior application was filed on or after September 16, 2012, a copy of the oath or declaration from the prior application can be used in the divisional application.
As stated in MPEP 201.06: “A new oath or declaration is required in a divisional application filed under 37 CFR 1.53(b), regardless of whether a copy of the oath or declaration from the prior nonprovisional application is used in the divisional application, unless the divisional application is filed on or after September 16, 2012.”
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According to MPEP 201, a nonprovisional application for patent is the standard type of patent application. The MPEP states:
“A nonprovisional application for patent filed under 35 U.S.C. 111(a) must include a specification, including a claim or claims, drawings when necessary, an oath or declaration, and the prescribed filing fee, search fee, examination fee and application size fee.”
This type of application is examined by the USPTO and can potentially lead to the grant of a patent. It requires a detailed description of the invention, claims defining the scope of protection sought, and often includes drawings to illustrate the invention.
For more information on declaration, visit: declaration.
For more information on drawings, visit: drawings.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on oath, visit: oath.
The MPEP 201.06(c) outlines the requirements for filing a divisional or continuation application without an executed oath or declaration:
’37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a continuation or divisional application filed by all or by fewer than all of the inventors named in a prior nonprovisional application containing an oath or declaration as required by 37 CFR 1.63, provided that a copy of the executed oath or declaration filed in the prior application is submitted for the continuation or divisional application and the specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application.’
To file without a new oath or declaration:
- Submit a copy of the executed oath or declaration from the prior application
- Ensure the new application contains no new matter
- File a copy of the specification and drawings from the prior application
This procedure allows for expedited filing while maintaining the integrity of the oath or declaration requirements.
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How does the oath or declaration work in divisional applications?
In divisional applications, the oath or declaration process is simplified to reduce the burden on applicants. According to MPEP 201.06(c):
37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) that contains the subject matter described in the prior nonprovisional application, provided a copy of the executed oath or declaration filed in the prior nonprovisional application is submitted.
Key points about the oath or declaration in divisional applications:
- A new oath or declaration is not required if the divisional application contains the same subject matter as the parent application.
- A copy of the executed oath or declaration from the parent application can be submitted.
- The copy must show the USPTO seal or stamp indicating it was received.
- If the inventorship changes, a new oath or declaration may be required.
This provision under 37 CFR 1.63(d) streamlines the filing process for divisional applications while ensuring proper inventorship documentation.
For more information on declaration, visit: declaration.
For more information on Divisional application, visit: Divisional application.
For more information on oath, visit: oath.
The inventorship in a continuing application can be the same as or different from the prior application, depending on the circumstances:
- For applications filed on or after September 16, 2012, the inventorship is determined by the application data sheet or the copy of the oath/declaration from the earlier-filed application.
- If the continuing application names a new joint inventor, they must provide a new oath or declaration.
The MPEP states: 37 CFR 1.63(d)(2) provides that 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 37 CFR 1.33(b) stating the name of each inventor in the continuing application.
For applications filed before September 16, 2012, different rules apply regarding the deletion or addition of inventors in continuing applications.
For more information on application data sheet, visit: application data sheet.
For more information on declaration, visit: declaration.
For more information on inventorship, visit: inventorship.
For more information on oath, visit: oath.
For applications filed on or after September 16, 2012, an applicant can file a continuation or divisional application using a copy of an oath or declaration from a prior application if:
- The oath or declaration complies with 35 U.S.C. 115 as revised effective September 16, 2012
- It was executed by or with respect to the inventor in the earlier-filed application
- A copy of the oath, declaration, or substitute statement showing the signature or an indication it was executed is submitted in the continuing application
As stated in the MPEP: For applications filed on or after September 16, 2012, the filing of a continuing application by all or by fewer than all of the inventors named in a prior application without a newly executed oath or declaration is permitted provided that an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement under 37 CFR 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.
It’s important to note that the oath or declaration must meet the current requirements, even if the prior application was filed before September 16, 2012.
For more information on continuation application, visit: continuation application.
For more information on declaration, visit: declaration.
For more information on Divisional application, visit: Divisional application.
For more information on oath, visit: oath.
Can I file a divisional application without a new oath or declaration?
Yes, you can file a divisional application without a new oath or declaration under certain conditions. According to MPEP 201.06(c):
“Under 37 CFR 1.63(d), a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) if: (1) the prior nonprovisional application contained an oath or declaration as prescribed by 37 CFR 1.63 that was executed by or with respect to the inventor and was signed in compliance with 37 CFR 1.64; and (2) the divisional application was filed by all or by fewer than all of the inventors named in the prior application.”
This provision simplifies the filing process for divisional applications, allowing inventors to use the oath or declaration from the original application, provided the specified conditions are met.
For more information on declaration, visit: declaration.
For more information on Divisional application, visit: Divisional application.
For more information on oath, visit: oath.
Can an inventor’s oath or declaration from a parent application be used in a divisional application?
Yes, an inventor’s oath or declaration from a parent application can often be used in a divisional application. According to MPEP 201.06(c):
‘In accordance with 37 CFR 1.63(d), a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) if: (1) the divisional application claims are directed to subject matter disclosed in the prior-filed application; (2) a copy of the inventor’s oath or declaration from the prior-filed application is provided for the divisional application; and (3) the prior-filed application contains a statement by the applicant that any required oath or declaration, including any substitute statement under 37 CFR 1.64 or assignment-statement under pre-AIA 37 CFR 1.63(e), has been filed.’
This provision simplifies the filing process for divisional applications by allowing the reuse of the original oath or declaration, provided certain conditions are met. However, it’s important to ensure that all inventors named in the divisional application are covered by the oath or declaration from the parent application.
For more information on declaration, visit: declaration.
For more information on Divisional application, visit: Divisional application.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on parent application, visit: parent application.
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)
For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if:
- An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application
- A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed
However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).
For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).
MPEP 201 - Types of Applications (7)
For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if:
- An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application
- A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed
However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).
For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).
According to MPEP 201, a nonprovisional application for patent is the standard type of patent application. The MPEP states:
“A nonprovisional application for patent filed under 35 U.S.C. 111(a) must include a specification, including a claim or claims, drawings when necessary, an oath or declaration, and the prescribed filing fee, search fee, examination fee and application size fee.”
This type of application is examined by the USPTO and can potentially lead to the grant of a patent. It requires a detailed description of the invention, claims defining the scope of protection sought, and often includes drawings to illustrate the invention.
For more information on declaration, visit: declaration.
For more information on drawings, visit: drawings.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on oath, visit: oath.
How does the oath or declaration work in divisional applications?
In divisional applications, the oath or declaration process is simplified to reduce the burden on applicants. According to MPEP 201.06(c):
37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) that contains the subject matter described in the prior nonprovisional application, provided a copy of the executed oath or declaration filed in the prior nonprovisional application is submitted.
Key points about the oath or declaration in divisional applications:
- A new oath or declaration is not required if the divisional application contains the same subject matter as the parent application.
- A copy of the executed oath or declaration from the parent application can be submitted.
- The copy must show the USPTO seal or stamp indicating it was received.
- If the inventorship changes, a new oath or declaration may be required.
This provision under 37 CFR 1.63(d) streamlines the filing process for divisional applications while ensuring proper inventorship documentation.
For more information on declaration, visit: declaration.
For more information on Divisional application, visit: Divisional application.
For more information on oath, visit: oath.
The inventorship in a continuing application can be the same as or different from the prior application, depending on the circumstances:
- For applications filed on or after September 16, 2012, the inventorship is determined by the application data sheet or the copy of the oath/declaration from the earlier-filed application.
- If the continuing application names a new joint inventor, they must provide a new oath or declaration.
The MPEP states: 37 CFR 1.63(d)(2) provides that 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 37 CFR 1.33(b) stating the name of each inventor in the continuing application.
For applications filed before September 16, 2012, different rules apply regarding the deletion or addition of inventors in continuing applications.
For more information on application data sheet, visit: application data sheet.
For more information on declaration, visit: declaration.
For more information on inventorship, visit: inventorship.
For more information on oath, visit: oath.
For applications filed on or after September 16, 2012, an applicant can file a continuation or divisional application using a copy of an oath or declaration from a prior application if:
- The oath or declaration complies with 35 U.S.C. 115 as revised effective September 16, 2012
- It was executed by or with respect to the inventor in the earlier-filed application
- A copy of the oath, declaration, or substitute statement showing the signature or an indication it was executed is submitted in the continuing application
As stated in the MPEP: For applications filed on or after September 16, 2012, the filing of a continuing application by all or by fewer than all of the inventors named in a prior application without a newly executed oath or declaration is permitted provided that an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement under 37 CFR 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.
It’s important to note that the oath or declaration must meet the current requirements, even if the prior application was filed before September 16, 2012.
For more information on continuation application, visit: continuation application.
For more information on declaration, visit: declaration.
For more information on Divisional application, visit: Divisional application.
For more information on oath, visit: oath.
Can I file a divisional application without a new oath or declaration?
Yes, you can file a divisional application without a new oath or declaration under certain conditions. According to MPEP 201.06(c):
“Under 37 CFR 1.63(d), a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) if: (1) the prior nonprovisional application contained an oath or declaration as prescribed by 37 CFR 1.63 that was executed by or with respect to the inventor and was signed in compliance with 37 CFR 1.64; and (2) the divisional application was filed by all or by fewer than all of the inventors named in the prior application.”
This provision simplifies the filing process for divisional applications, allowing inventors to use the oath or declaration from the original application, provided the specified conditions are met.
For more information on declaration, visit: declaration.
For more information on Divisional application, visit: Divisional application.
For more information on oath, visit: oath.
Can an inventor’s oath or declaration from a parent application be used in a divisional application?
Yes, an inventor’s oath or declaration from a parent application can often be used in a divisional application. According to MPEP 201.06(c):
‘In accordance with 37 CFR 1.63(d), a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) if: (1) the divisional application claims are directed to subject matter disclosed in the prior-filed application; (2) a copy of the inventor’s oath or declaration from the prior-filed application is provided for the divisional application; and (3) the prior-filed application contains a statement by the applicant that any required oath or declaration, including any substitute statement under 37 CFR 1.64 or assignment-statement under pre-AIA 37 CFR 1.63(e), has been filed.’
This provision simplifies the filing process for divisional applications by allowing the reuse of the original oath or declaration, provided certain conditions are met. However, it’s important to ensure that all inventors named in the divisional application are covered by the oath or declaration from the parent application.
For more information on declaration, visit: declaration.
For more information on Divisional application, visit: Divisional application.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on parent application, visit: parent application.
MPEP 300 - Ownership and Assignment (1)
When correcting an erroneous assignment, the affidavit or declaration submitted to the USPTO should contain specific information. According to MPEP 323.01(c), the affidavit should include:
- Identification of yourself as the correct owner
- A statement that the previously recorded document was submitted with erroneous information
- The reel and frame number of the previously recorded document
- A summary of the true chain of title
- A statement that the original applicant, patentee, or last correct assignee has been and continues to be the owner of the application or patent at issue
The MPEP specifically states: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change, and a statement that the original applicant or patentee or last correct assignee has been, and continues to be, the owner of the application, or patent at issue.
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MPEP 400 - Representative of Applicant or Owner (7)
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 ยง 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.
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What information must be included in an oath or declaration for an unavailable joint inventor?
When filing an oath or declaration for an unavailable joint inventor, specific information must be included. According to MPEP 409.03(a), the oath or declaration must contain:
- The name of the unavailable inventor
- A statement that the inventor is unavailable and the reason for unavailability
- The last known address of the unavailable inventor
Additionally, the MPEP states:
‘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.’
It’s crucial to provide as much detail as possible about the efforts made to contact the unavailable inventor and any responses received. This information helps the USPTO understand the situation and process the application appropriately.
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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.
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What happens if an inventor dies or becomes legally incapacitated after an application is filed?
If an inventor dies or becomes legally incapacitated after an application is filed, the legal representative of the deceased or incapacitated inventor may make an oath or declaration in compliance with 37 CFR 1.64. The MPEP 409.01(a) states:
“If an inventor dies after an application naming the inventor is filed, the personal representative of the inventor’s estate may make an oath or declaration in compliance with 37 CFR 1.64.”
This process ensures that the application can continue to be prosecuted even if the inventor is no longer able to participate. The legal representative must provide evidence of their authority to act on behalf of the deceased or incapacitated inventor.
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When filing a patent application as an assignee or obligated assignee, specific documentation is required to establish the right to apply for the patent. According to MPEP 409.05:
Quote: ‘The assignee or obligated assignee who files the application must comply with the oath or declaration requirements of 37 CFR 1.63, including meeting the citizenship requirement of 37 CFR 1.63(a)(3).’
The required documentation includes:
- A properly executed oath or declaration from the inventors
- An assignment document or proof of obligation to assign
- Application Data Sheet (ADS) identifying the assignee as the applicant
Additionally, if filing as an obligated assignee, you may need to provide evidence of the obligation to assign, such as an employment agreement or contract. It’s important to ensure all documentation is complete and accurate to avoid potential issues with the patent application process.
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When filing a patent application with at least one unavailable joint inventor under pre-AIA 37 CFR 1.47(a), the following requirements must be met:
- All available joint inventors must make an oath or declaration for themselves and on behalf of the nonsigning inventor.
- Proof must be provided that the nonsigning inventor cannot be found or refuses to execute the application.
- The last known address of the nonsigning inventor must be stated.
As stated in MPEP 409.03(a):
“An application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements: (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 […] and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64.”
It’s important to note that this section is not applicable to applications filed on or after September 16, 2012.
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Can a legal representative sign the oath or declaration for an unavailable joint inventor?
Yes, in certain circumstances, a legal representative can sign the oath or declaration for an unavailable joint inventor. According to MPEP 409.03(a):
‘If an inventor is deceased or legally incapacitated, the legal representative of the inventor may sign the oath or declaration as the inventor.’
The legal representative must provide proof of their authority to act on behalf of the unavailable inventor. This might include:
- Death certificate and letters testamentary for a deceased inventor
- Court order appointing a guardian for a legally incapacitated inventor
It’s important to note that this provision applies only to deceased or legally incapacitated inventors, not to those who are simply unavailable or unwilling to sign.
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MPEP 500 - Receipt and Handling of Mail and Papers (2)
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the inventor’s oath or declaration can be postponed until the application is in condition for allowance, provided certain conditions are met:
- An application data sheet (ADS) in compliance with 37 CFR 1.76 must be filed identifying each inventor by their legal name, mailing address, and residence (if different from mailing address)
- The inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid
The MPEP states: For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.53(f)(3).
This provision allows applicants more flexibility in completing the application requirements, but it’s important to ensure the oath or declaration is filed before paying the issue fee to avoid abandonment.
For more information on declaration, visit: declaration.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on patent application requirements, visit: patent application requirements.
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:
For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.
However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.
MPEP 506 - Completeness of Original Application (2)
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the inventor’s oath or declaration can be postponed until the application is in condition for allowance, provided certain conditions are met:
- An application data sheet (ADS) in compliance with 37 CFR 1.76 must be filed identifying each inventor by their legal name, mailing address, and residence (if different from mailing address)
- The inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid
The MPEP states: For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.53(f)(3).
This provision allows applicants more flexibility in completing the application requirements, but it’s important to ensure the oath or declaration is filed before paying the issue fee to avoid abandonment.
For more information on declaration, visit: declaration.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on patent application requirements, visit: patent application requirements.
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:
For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.
However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.
Patent Law (84)
The signing requirements for a supplemental oath or declaration depend on the nature of the correction being made. According to MPEP 603:
37 CFR 1.67(b) provides that a supplemental inventor’s oath or declaration under 37 CFR 1.67 must be executed by the person whose inventor’s oath or declaration is being withdrawn, replaced, or otherwise corrected.
For applications filed before September 16, 2012, the MPEP provides more detailed guidance:
- If the correction relates to all inventors or applicants, all must sign.
- If the correction relates to only certain inventors or applicants, only those to whom the correction relates need to sign.
In cases where an inventor is unable or unwilling to sign, the requirement for that inventor to sign the supplemental declaration may be suspended or waived in accordance with 37 CFR 1.183.
In such cases, joint inventors or parties with sufficient proprietary interest may sign on behalf of the non-signing inventor.
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For patent applications filed before September 16, 2012, the oath or declaration can be administered by various authorized individuals, depending on the location. According to pre-AIA 35 U.S.C. 115:
- Within the United States: Any person authorized by law to administer oaths
- In a foreign country:
- A diplomatic or consular officer of the United States authorized to administer oaths
- An officer having an official seal and authorized to administer oaths in the foreign country, whose authority is proved by a certificate of a U.S. diplomatic or consular officer
- An official designated by a foreign country that, by treaty or convention, accords like effect to apostilles of designated officials in the United States
The law states: Such oath is valid if it complies with the laws of the state or country where made.
This provision ensures flexibility in oath administration while maintaining legal validity across different jurisdictions.
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For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if:
- An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application
- A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed
However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).
For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).
A new oath or declaration is required in a patent application under the following circumstances:
- When filing a continuation or divisional application
- When filing a continuation-in-part application
- To correct inventorship in an application
- When the original oath or declaration was defective
According to MPEP 602.02: ‘A new oath or declaration is required in a continuation or divisional application filed under 37 CFR 1.53(b) or in a continuation-in-part application.’ Additionally, the MPEP states that ‘A new oath or declaration in compliance with 37 CFR 1.63 or 1.67 is required in a continuation or divisional application filed under 37 CFR 1.53(b), regardless of whether a copy of the oath or declaration from the prior application is submitted.’
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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.
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An applicant can submit a new inventor’s oath or declaration to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration. This is explicitly stated in the MPEP: “Applicant may submit a new inventor’s oath or declaration to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration.” This provision is supported by 37 CFR 1.67(a).
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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.
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If an inventor cannot comprehend the documents related to their oath or declaration, the MPEP 602.06 provides guidance:
“If the documents are in a language the individual cannot comprehend, the documents may be explained to him or her so that he or she is able to understand them.”
This means that the content of the documents can be explained to the inventor in a language they understand, allowing them to make an informed oath or declaration. It’s crucial that the inventor understands the content of the documents they are swearing to or declaring, even if they cannot read the original language.
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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.
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Venue is a crucial aspect of patent oaths and declarations. MPEP 602 states, “That portion of an oath or affidavit indicating where the oath is taken is known as the venue. […] Venue and notary jurisdiction must correspond or the oath is improper.” This means that the location where the oath is taken must match the jurisdiction of the notary or official administering the oath. The MPEP further advises, “The oath should show on its face that it was taken within the jurisdiction of the certifying officer or notary.” Ensuring correct venue information helps establish the validity of the oath or declaration.
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What is the required oath or declaration for a divisional application?
For a divisional application, a new oath or declaration is generally required. However, there are exceptions:
- If the application is filed on or after September 16, 2012, a copy of the oath or declaration from the prior nonprovisional application may be used, provided that it complies with 37 CFR 1.63, 1.64, or 1.67 for the divisional application.
- If the divisional application was filed before September 16, 2012, and the prior application was filed on or after September 16, 2012, a copy of the oath or declaration from the prior application can be used in the divisional application.
As stated in MPEP 201.06: “A new oath or declaration is required in a divisional application filed under 37 CFR 1.53(b), regardless of whether a copy of the oath or declaration from the prior nonprovisional application is used in the divisional application, unless the divisional application is filed on or after September 16, 2012.”
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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.
What is the procedure for filing a continuation or divisional application without a new oath or declaration?
When filing a continuation or divisional application, a new oath or declaration is not always required. According to MPEP 602.05, the following procedure can be followed:
- File a copy of the oath or declaration from the prior application.
- Include a statement requesting the filing of the continuation or divisional application without a newly executed oath or declaration.
- Pay the filing fee for the continuation or divisional application.
The MPEP states: ‘The applicant may file a continuation or divisional application by filing a copy of the oath or declaration from the prior application, accompanied by a statement requesting the filing of the continuation or divisional application without a newly executed oath or declaration and payment of the filing fee.’
This procedure simplifies the filing process for certain types of continuing applications, reducing paperwork and potentially saving time for applicants.
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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.
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The deadline for submitting an inventor’s oath or declaration in a patent application filed on or after September 16, 2012, is the date on which the issue fee is paid. This is stated in MPEP 602.01(a):
For applications filed on or after September 16, 2012, the timing of the submission of the inventor’s oath or declaration has been liberalized. The inventor’s oath or declaration is no longer required to be submitted prior to the filing of the application. Rather, the inventor’s oath or declaration may be postponed until payment of the issue fee.
However, it’s important to note that while the oath or declaration can be submitted later, the application must still include the names of all inventors at the time of filing. If the oath or declaration is not submitted with the initial application, a substitute statement may be required.
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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 ยง 1.63, or a substitute statement in compliance with ยง 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 ยง 602.01(a) for oath or declaration requirements and MPEP ยง 604 for substitute statement requirements.
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MPEP 602.07 is titled ‘Oath or Declaration Filed in United States as a Designated Office’. This section provides guidance on the requirements for oaths or declarations filed in the United States Patent and Trademark Office (USPTO) when it acts as a designated office for international patent applications under the Patent Cooperation Treaty (PCT).
The section directs readers to MPEP ยง 1893.01(e) for more detailed information. This cross-reference suggests that MPEP ยง 1893.01(e) contains more specific instructions or requirements related to oaths or declarations in this context.
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A supplemental oath or declaration is a document that can be submitted to correct deficiencies or inaccuracies in an earlier-filed inventor’s oath or declaration. According to MPEP 603, it is provided for under 35 U.S.C. 115(h) and 37 CFR 1.67.
The MPEP states: 37 CFR 1.67(a) provides that the applicant may submit an inventor’s oath or declaration meeting the requirements of 37 CFR 1.63, 1.64, or 1.62 to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration.
It’s important to note that while corrections can be made, no new matter may be introduced into a nonprovisional application after its filing date even if an inventor’s oath or declaration is filed to correct deficiencies or inaccuracies present in the earlier-filed oath or declaration.
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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 ยง 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.
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A substitute statement is a document that can be filed in place of an oath or declaration when the inventor is deceased, legally incapacitated, cannot be found or reached after diligent effort, or refuses to execute the oath or declaration. According to MPEP 602:
’35 U.S.C. 115(d) provides that ‘the applicant for patent’ may provide a substitute statement under the circumstances described in 35 U.S.C. 115(d)(2). The applicant for patent is defined in 35 U.S.C. 100(g) as ‘the inventor or joint inventors who are applying for a patent through their assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest in the matter.’
The substitute statement must:
- Identify the inventor to whom it relates
- Identify the circumstances permitting the filing of the substitute statement
- Include a statement that the person executing the substitute statement has reviewed and understands the contents of the application
- Include a statement that the person executing the substitute statement acknowledges the duty to disclose information material to patentability
This provision allows for the continuation of the patent application process even when the inventor is unable or unwilling to execute the oath or declaration.
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According to MPEP 201, a nonprovisional application for patent is the standard type of patent application. The MPEP states:
“A nonprovisional application for patent filed under 35 U.S.C. 111(a) must include a specification, including a claim or claims, drawings when necessary, an oath or declaration, and the prescribed filing fee, search fee, examination fee and application size fee.”
This type of application is examined by the USPTO and can potentially lead to the grant of a patent. It requires a detailed description of the invention, claims defining the scope of protection sought, and often includes drawings to illustrate the invention.
For more information on declaration, visit: declaration.
For more information on drawings, visit: drawings.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on oath, visit: oath.
When correcting an erroneous assignment, the affidavit or declaration submitted to the USPTO should contain specific information. According to MPEP 323.01(c), the affidavit should include:
- Identification of yourself as the correct owner
- A statement that the previously recorded document was submitted with erroneous information
- The reel and frame number of the previously recorded document
- A summary of the true chain of title
- A statement that the original applicant, patentee, or last correct assignee has been and continues to be the owner of the application or patent at issue
The MPEP specifically states: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change, and a statement that the original applicant or patentee or last correct assignee has been, and continues to be, the owner of the application, or patent at issue.
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For patent applications filed before September 16, 2012, the oath or declaration must include specific information about foreign applications if not provided in an application data sheet. According to pre-AIA 37 CFR 1.63(c)(2), the oath or declaration must identify:
- Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made
- Any foreign application having a filing date before that of the application on which priority is claimed
The MPEP elaborates: The applicant is required to recite all foreign applications filed prior to the application on which priority is claimed. It is required to give the foreign application number and name of the country or office in which filed, as well as the filing date of each foreign application to which priority is claimed.
This information is crucial for establishing priority claims and ensuring compliance with patent law requirements regarding prior foreign filings.
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What information must be included in an oath or declaration for an unavailable joint inventor?
When filing an oath or declaration for an unavailable joint inventor, specific information must be included. According to MPEP 409.03(a), the oath or declaration must contain:
- The name of the unavailable inventor
- A statement that the inventor is unavailable and the reason for unavailability
- The last known address of the unavailable inventor
Additionally, the MPEP states:
‘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.’
It’s crucial to provide as much detail as possible about the efforts made to contact the unavailable inventor and any responses received. This information helps the USPTO understand the situation and process the application appropriately.
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If the USPTO finds an inventor’s oath or declaration defective, the following actions may occur:
- For non-reissue applications filed before allowance, non-examiner staff will review the oath or declaration and may send an informational notice about deficiencies.
- For applications at or after allowance, non-examiner staff will review the oath or declaration and send a requirement to correct any deficiencies.
- If the oath or declaration is not submitted by the time of allowance, a notice requiring it may be sent with the Notice of Allowability.
As stated in the MPEP, The required inventor’s oath or declaration must be submitted no later than the date on which the issue fee is paid. See 35 U.S.C. 115(f).
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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.
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What happens if an inventor refuses to sign the oath or declaration for a patent application?
If an inventor refuses to sign the oath or declaration for a patent application, the applicant may file a substitute statement in lieu of an oath or declaration. According to MPEP 602.01(a):
“A substitute statement may be used in lieu of an oath or declaration if the inventor is deceased, legally incapacitated, cannot be found or reached after diligent effort, or refuses to execute the oath or declaration.”
The substitute statement must be signed by an applicant under 37 CFR 1.43, 1.45, or 1.46. It must:
- Identify the inventor to whom it relates
- Identify the person executing the substitute statement and their relationship to the inventor
- Include a statement that the person executing the substitute statement believes the named inventor to be the original inventor
- State that the application was made or authorized to be made by the person executing the substitute statement
- State the permitted basis for filing the substitute statement (in this case, the inventor’s refusal to sign)
It’s important to note that attempts to reach the inventor and obtain their signature should be documented, as the USPTO may require evidence of the inventor’s refusal to sign.
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What happens if an inventor refuses to sign the inventor’s oath or declaration?
If an inventor refuses to sign the inventor’s oath or declaration, the application may still be filed under certain circumstances. According to MPEP 602.01(a):
“If an inventor refuses to execute an oath or declaration or cannot be found or reached after diligent effort, the applicant under 37 CFR 1.43, 1.45 or 1.46 may execute an oath or declaration naming the non-signing inventor.”
In such cases, the applicant must:
- Submit a substitute statement in lieu of an oath or declaration
- Provide evidence of the inventor’s refusal to sign or unavailability
- Explain the efforts made to contact the inventor
The Office will evaluate the circumstances and may accept the application without the non-signing inventor’s oath or declaration.
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What happens if an inventor refuses to sign an oath or declaration?
If an inventor refuses to sign an oath or declaration, the application may still proceed under certain circumstances. According to MPEP 602.09:
“If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of themselves and the nonsigning inventor.”
In such cases, the applicant must:
- File an oath or declaration on behalf of the nonsigning inventor
- Provide a statement of facts explaining the situation
- Show that the nonsigning inventor’s last known address has been stated
- Demonstrate that notice of the filing of the application has been provided to the nonsigning inventor
This process allows the application to move forward despite the lack of cooperation from one inventor.
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What happens if an inventor dies or becomes legally incapacitated after an application is filed?
If an inventor dies or becomes legally incapacitated after an application is filed, the legal representative of the deceased or incapacitated inventor may make an oath or declaration in compliance with 37 CFR 1.64. The MPEP 409.01(a) states:
“If an inventor dies after an application naming the inventor is filed, the personal representative of the inventor’s estate may make an oath or declaration in compliance with 37 CFR 1.64.”
This process ensures that the application can continue to be prosecuted even if the inventor is no longer able to participate. The legal representative must provide evidence of their authority to act on behalf of the deceased or incapacitated inventor.
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According to MPEP 602.08(c), when a specification is filed attached to an oath or declaration after the initial application filing date, the USPTO follows a specific procedure:
Any specification that is filed attached to an oath or declaration on a date later than the application filing date will not be compared with the specification submitted on filing.
Furthermore, the MPEP states: Absent any statement(s) to the contrary, the ‘attached’ specification will be presumed to be a copy of the specification and any amendments thereto, which were filed in the USPTO in order to obtain a filing date for the application.
This means that the USPTO will not verify if the later-submitted specification matches the original filing. Instead, they assume it’s a copy of the original specification plus any amendments, unless explicitly stated otherwise. This practice helps streamline the application process and avoid confusion between different versions of the specification.
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When filing a patent application as an assignee or obligated assignee, specific documentation is required to establish the right to apply for the patent. According to MPEP 409.05:
Quote: ‘The assignee or obligated assignee who files the application must comply with the oath or declaration requirements of 37 CFR 1.63, including meeting the citizenship requirement of 37 CFR 1.63(a)(3).’
The required documentation includes:
- A properly executed oath or declaration from the inventors
- An assignment document or proof of obligation to assign
- Application Data Sheet (ADS) identifying the assignee as the applicant
Additionally, if filing as an obligated assignee, you may need to provide evidence of the obligation to assign, such as an employment agreement or contract. It’s important to ensure all documentation is complete and accurate to avoid potential issues with the patent application process.
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The signature requirements for inventor’s oaths or declarations are as follows:
- There is no requirement for a signature to be made in any particular manner.
- Inventors can use titles such as ‘Dr.’ in their signatures, but these won’t appear in the printed patent.
- Non-English character signatures are accepted.
- If an inventor cannot write, their mark must be witnessed.
According to MPEP ยง 602.08(b), “There is no requirement that a signature be made in any particular manner.” The section also states, “It is permissible for an applicant to use a title of nobility or other title, such as ‘Dr.’, in connection with their signature. The title will not appear in the printed patent.“
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For continuing applications filed on or after September 16, 2012, the following requirements apply:
- A copy of an oath or declaration or substitute statement from the prior nonprovisional application can be used, provided it complies with 37 CFR 1.63 or 37 CFR 1.64.
- The oath or declaration must comply with 35 U.S.C. 115 and the relevant CFR sections in effect for applications filed on or after September 16, 2012.
- It must include a statement that the application was made or authorized to be made by the person executing the oath or declaration.
As stated in the MPEP, “a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet 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.”
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When filing a patent application with at least one unavailable joint inventor under pre-AIA 37 CFR 1.47(a), the following requirements must be met:
- All available joint inventors must make an oath or declaration for themselves and on behalf of the nonsigning inventor.
- Proof must be provided that the nonsigning inventor cannot be found or refuses to execute the application.
- The last known address of the nonsigning inventor must be stated.
As stated in MPEP 409.03(a):
“An application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements: (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 […] and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64.”
It’s important to note that this section is not applicable to applications filed on or after September 16, 2012.
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The MPEP 201.06(c) outlines the requirements for filing a divisional or continuation application without an executed oath or declaration:
’37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a continuation or divisional application filed by all or by fewer than all of the inventors named in a prior nonprovisional application containing an oath or declaration as required by 37 CFR 1.63, provided that a copy of the executed oath or declaration filed in the prior application is submitted for the continuation or divisional application and the specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application.’
To file without a new oath or declaration:
- Submit a copy of the executed oath or declaration from the prior application
- Ensure the new application contains no new matter
- File a copy of the specification and drawings from the prior application
This procedure allows for expedited filing while maintaining the integrity of the oath or declaration requirements.
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For continuation or divisional applications filed before September 16, 2012 under 37 CFR 1.53(b) (excluding continuation-in-part applications), applicants could file using a copy of the oath or declaration from the prior nonprovisional application. This is supported by the MPEP, which states:
“A continuation or divisional application filed before September 16, 2012 under 37 CFR 1.53(b) (other than a continuation-in-part (CIP)) may be filed with a copy of the oath or declaration from the prior nonprovisional application.”
This provision simplified the filing process for certain types of continuing applications by allowing the use of previously submitted documents.
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What are the requirements for an oath or declaration in a reissue application?
In a reissue application, the oath or declaration must comply with specific requirements outlined in MPEP 1414. The MPEP states:
“The reissue oath/declaration must include a statement that the applicant believes the original patent to be wholly or partly inoperative or invalid.”
Additionally, the oath or declaration must:
- Identify at least one error being relied upon as the basis for reissue
- State that all errors being corrected in the reissue application arose without any deceptive intention on the part of the applicant
- Be signed by the inventor(s) or the assignee of the entire interest
It’s important to note that the requirements for a reissue oath or declaration are more stringent than those for a regular patent application due to the nature of reissue proceedings.
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For applications filed before September 16, 2012, the requirements for an inventor’s oath or declaration are governed by pre-AIA 37 CFR 1.63. The oath or declaration must:
- Be executed (signed) in accordance with pre-AIA 37 CFR 1.66 or pre-AIA 37 CFR 1.68.
- Identify each inventor by full name, including family name and at least one given name, without abbreviation.
- Identify the country of citizenship of each inventor.
- State that the person making the oath or declaration believes the named inventor(s) to be the original and first inventor(s) of the subject matter claimed.
- State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims.
- Acknowledge the duty to disclose to the Office all information known to be material to patentability as defined in 37 CFR 1.56.
These requirements are different from those for applications filed on or after September 16, 2012, and it’s important to use the correct version of the oath or declaration based on the application’s filing date.
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A substitute statement in lieu of an oath or declaration must:
- Comply with the requirements of 37 CFR 1.63, identifying the inventor or joint inventor with respect to whom a substitute statement is executed, and stating upon information and belief the facts which such inventor is required to state.
- Identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor.
- Identify the circumstances permitting the person to execute the substitute statement.
- Include an acknowledgement that any willful false statement made in the substitute statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than 5 years, or both.
As stated in MPEP 604: ‘A substitute statement under 37 CFR 1.64 must: (1) Comply with the requirements of 37 CFR 1.63(a), identifying the inventor or joint inventor with respect to whom a substitute statement in lieu of an oath or declaration is executed, and stating upon information and belief the facts which such inventor is required to state.’
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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 ยง 201.08 and ยง 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.
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What are the requirements for a complete patent application?
A complete patent application must include the following elements:
- Specification (including a description and claim(s))
- Drawing(s) (when necessary)
- Oath or declaration
- Filing, search, and examination fees
As stated in MPEP 601.01: ‘The application for patent as filed must include a specification as prescribed by 35 U.S.C. 112, at least one claim as prescribed by 35 U.S.C. 112, and, in applications other than design applications, any drawing referred to in the specification or required by 35 U.S.C. 113.’ Additionally, the applicant must submit an oath or declaration and pay the necessary fees to complete the application.
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The MPEP 602.08(c) warns about a serious potential consequence of misidentifying an application:
Further an oath or declaration attached to a cover letter referencing an incorrect application may not become associated with the correct application and, therefore, could result in the abandonment of the correct application.
This means that if you submit an oath or declaration with a cover letter that references the wrong application number or details, it might not be properly associated with the intended application. As a result, the correct application could be considered abandoned due to lack of a proper oath or declaration.
To avoid this issue, it’s crucial to double-check all application identifiers and ensure that cover letters, oaths, and declarations accurately reference the intended application. If you discover such an error, you should contact the USPTO promptly to rectify the situation and prevent unintended abandonment.
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According to MPEP 602.08(c), there are three acceptable combinations of information for identifying a patent application in an oath or declaration filed on the application filing date:
- Name of inventor(s) and reference to an attached specification or application
- Name of inventor(s) and attorney docket number on the specification as filed
- Name of inventor(s) and title of the invention on the specification as filed
The MPEP states: Filing dates are granted on applications filed without an inventor’s oath or declaration in compliance with 37 CFR 1.63
. This means that an application can receive a filing date even if the oath or declaration is not initially included.
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A complete nonprovisional patent application filed under 35 U.S.C. 111(a) comprises the following components:
- A specification, including claims, as prescribed by 35 U.S.C. 112
- Drawings as prescribed by 35 U.S.C. 113
- An oath or declaration as prescribed by 35 U.S.C. 115
- The prescribed filing fee, search fee, examination fee, and application size fee
As stated in the MPEP: “A complete application filed under 35 U.S.C. 111(a) comprises a specification, including claims, as prescribed by 35 U.S.C. 112, drawings as prescribed by 35 U.S.C. 113, an oath or declaration as prescribed by 35 U.S.C. 115, and the prescribed filing fee, search fee, examination fee and application size fee.”
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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 ยง 201.04.
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A valid inventor’s oath or declaration must include several key components as outlined in the MPEP:
- Inventor bibliographic information (see MPEP ยง 602.08(a))
- The name of the inventor or each joint inventor
- Signatures of each inventor, except as otherwise provided
- Identification of the application to which it is directed
The MPEP states: The inventor’s oath or declaration must include certain inventor bibliographic information (see MPEP ยง 602.08(a)), name the inventor or each joint inventor and except as otherwise provided be signed by each inventor (see MPEP ยง 602.08(b)), and identify the application to which it is directed (see MPEP ยง 602.08(c)).
It’s important to ensure all these elements are present and correct to avoid potential issues with the patent application process.
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Failing to submit an inventor’s oath or declaration before the issue fee is paid can have serious consequences for a patent application. According to MPEP 602.01(a):
If an application does not include an oath or declaration by the inventor or a substitute statement, the Office will issue a notice requiring the applicant to file the inventor’s oath or declaration no later than the date on which the issue fee is paid.
The consequences of not complying with this requirement include:
- Application Abandonment: If the oath or declaration is not submitted by the time the issue fee is paid, the application will be regarded as abandoned.
- Additional Fees: To revive an abandoned application, the applicant must pay additional fees and file a petition for revival.
- Delay in Patent Grant: The patent will not be granted until the proper oath or declaration is submitted and the application is revived.
- Potential Loss of Patent Rights: In extreme cases, failure to timely submit the oath or declaration could result in a loss of patent rights if statutory deadlines are missed.
To avoid these issues, applicants should ensure that a proper inventor’s oath or declaration is submitted well before the issue fee payment deadline.
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Failing to submit a proper oath or declaration in a patent application can have serious consequences:
- The application may be considered incomplete and subject to abandonment.
- A Notice to File Missing Parts will be issued, requiring submission of the oath or declaration.
- A surcharge may be required for late submission.
- The application will not be examined until a proper oath or declaration is received.
According to MPEP 602.01(a): “If the application is in condition for allowance but does not include an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, the Office will issue a ‘Notice of Allowability’ (PTOL-37) requiring the oath or declaration.” Failure to comply with this notice can result in abandonment of the application.
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Yes, each separate oath or declaration by an inventor should be complete in itself. The MPEP clearly states: “Each separate oath or declaration by an inventor should be complete in itself.” This guideline ensures that each inventor’s oath or declaration can stand alone and provide all necessary information without relying on other documents. This is particularly important for applications filed on or after September 16, 2012, where joint inventors may execute separate oaths or declarations.
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Changes in inventorship for continuation or divisional applications filed under 37 CFR 1.53(b) could be handled in two ways:
- Filing with a copy of an oath or declaration from a prior application and a statement requesting the deletion of non-inventors.
- Filing with a newly executed oath or declaration naming the correct inventive entity.
The MPEP states:
“If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(b), the continuation or divisional application may either be filed (A) with a copy of an oath or declaration from a prior application and a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application (see pre-AIA 37 CFR 1.63(d)), or (B) with a newly executed oath or declaration naming the correct inventive entity.”
This provision allowed applicants to address changes in inventorship efficiently when filing continuation or divisional applications.
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For inventors who have only a single name, there are specific guidelines for presenting their name in patent applications:
- The single name should be listed in the Last Name field.
- The First Name field should be left blank.
- A period should be placed in the First Name field if the USPTO computer system requires a first name entry.
According to MPEP 602.08(b):
If an inventor’s name ‘includes’ only a single name, it should be placed in the Last Name box of the inventor data sheet (37 CFR 1.76(b)(1)) or inventor’s oath or declaration (37 CFR 1.63(a)(1)), with the First Name box blank or filled with a period (if required by the computer system to be a non-blank field).
This ensures proper recording and processing of the inventor’s name in the patent application system.
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Handling changes in inventorship in a continuing application depends on the filing date of the application and the nature of the change. Here are the key points:
- For applications filed on or after September 16, 2012:
- Inventorship is determined by the Application Data Sheet (ADS) if filed before or with the oath/declaration copy.
- If no ADS is filed, inventorship is based on the oath/declaration copy from the earlier application.
- New joint inventors must provide a new oath or declaration.
- For applications filed before September 16, 2012:
- To remove an inventor, file a copy of the prior oath/declaration with a statement requesting deletion of the non-inventor’s name.
- Alternatively, file a new oath/declaration with the correct inventive entity.
- For continuation-in-part applications, a new oath/declaration is typically required.
According to MPEP 602.05(b): If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(b), the continuation or divisional application may either be filed (A) with a copy of an oath or declaration from a prior application and a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application, or (B) with a newly executed oath or declaration naming the correct inventive entity.
Always ensure compliance with the specific requirements based on your application’s filing date and type.
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How does the oath or declaration work in divisional applications?
In divisional applications, the oath or declaration process is simplified to reduce the burden on applicants. According to MPEP 201.06(c):
37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) that contains the subject matter described in the prior nonprovisional application, provided a copy of the executed oath or declaration filed in the prior nonprovisional application is submitted.
Key points about the oath or declaration in divisional applications:
- A new oath or declaration is not required if the divisional application contains the same subject matter as the parent application.
- A copy of the executed oath or declaration from the parent application can be submitted.
- The copy must show the USPTO seal or stamp indicating it was received.
- If the inventorship changes, a new oath or declaration may be required.
This provision under 37 CFR 1.63(d) streamlines the filing process for divisional applications while ensuring proper inventorship documentation.
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The inventorship in a continuing application can be the same as or different from the prior application, depending on the circumstances:
- For applications filed on or after September 16, 2012, the inventorship is determined by the application data sheet or the copy of the oath/declaration from the earlier-filed application.
- If the continuing application names a new joint inventor, they must provide a new oath or declaration.
The MPEP states: 37 CFR 1.63(d)(2) provides that 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 37 CFR 1.33(b) stating the name of each inventor in the continuing application.
For applications filed before September 16, 2012, different rules apply regarding the deletion or addition of inventors in continuing applications.
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In patent applications filed before September 16, 2012, an Application Data Sheet (ADS) can significantly affect the oath or declaration requirements. Specifically:
- An ADS can eliminate the need for certain information in the oath or declaration.
- It allows for the submission of some bibliographic data without an oath or declaration.
The MPEP 601.05(b) states: “If an application data sheet is used in an application filed before September 16, 2012 (in compliance with pre-AIA 37 CFR 1.76) to supply or change the information in 37 CFR 1.63(c), and the oath or declaration under 37 CFR 1.63 refers to the application data sheet, the oath or declaration does not need to be supplemented to include the information supplied in the application data sheet.”
This means that if the oath or declaration references the ADS, it doesn’t need to be updated with information already provided in the ADS, streamlining the application process.
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For patent applications filed on or after September 16, 2012, joint inventors have more flexibility in executing oaths or declarations. The MPEP states: “For applications filed on or after September 16, 2012, joint inventors may execute separate oaths or declarations in which only the person executing the oath or declaration is identified if an ADS is filed that provides the required inventor information.” This means each inventor can submit their own oath or declaration, naming only themselves, as long as a complete Application Data Sheet (ADS) is filed with all inventor information. However, if such an ADS is not filed, then each oath or declaration must name all of the inventors, as per 37 CFR 1.63(a) and (b).
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For oaths or declarations filed after the application filing date, MPEP 602.08(c) provides several acceptable methods for identifying the application:
- Application number (series code and serial number, e.g., 08/123,456)
- Serial number and filing date
- International application number
- International registration number for design applications
- Attorney docket number on the original specification
- Title of the invention from the original specification, with reference to an attached specification
- Title of the invention from the original specification, with a cover letter identifying the application
The MPEP emphasizes that Absent any statement(s) to the contrary, it will be presumed that the application filed in the USPTO is the application which the inventor(s) executed by signing the oath or declaration.
This presumption helps ensure proper association of documents with the correct application.
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The process for changing the correspondence address in a patent application filed before September 16, 2012, depends on whether an oath or declaration has been filed:
- Before filing an oath or declaration: The correspondence address can be changed by the party who filed the application, including the inventor(s), any patent practitioner named in the transmittal papers, or the assignee who filed the application.
- After filing an oath or declaration: The correspondence address can be changed by a patent practitioner of record, an assignee as provided under pre-AIA 37 CFR 3.71(b), or all of the applicants, unless there’s an assignee of the entire interest who has taken action in the application.
As stated in MPEP 601.03(b): “Where a correspondence address has been established on filing of the application or changed pursuant to pre-AIA 37 CFR 1.33(a)(1) (prior to the filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors), that correspondence address remains in effect upon filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 and can only be subsequently changed pursuant to pre-AIA 37 CFR 1.33(a)(2).”
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For applications filed on or after September 16, 2012, an applicant can file a continuation or divisional application using a copy of an oath or declaration from a prior application if:
- The oath or declaration complies with 35 U.S.C. 115 as revised effective September 16, 2012
- It was executed by or with respect to the inventor in the earlier-filed application
- A copy of the oath, declaration, or substitute statement showing the signature or an indication it was executed is submitted in the continuing application
As stated in the MPEP: For applications filed on or after September 16, 2012, the filing of a continuing application by all or by fewer than all of the inventors named in a prior application without a newly executed oath or declaration is permitted provided that an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement under 37 CFR 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.
It’s important to note that the oath or declaration must meet the current requirements, even if the prior application was filed before September 16, 2012.
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No, the USPTO does not routinely check the date of execution for inventor’s oaths or declarations. The MPEP states:
The Office does not check the date of execution of the oath or declaration and will not require a newly executed oath or declaration based on an oath or declaration being stale (i.e., when the date of execution is more than three months prior to the filing date of the application) or where the date of execution has been omitted.
However, applicants should be aware that they have a continuing duty of disclosure under 37 CFR 1.56. This means that while the USPTO doesn’t check the execution date, applicants are still responsible for ensuring the information in the oath or declaration remains accurate and up-to-date.
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Yes, for applications filed on or after September 16, 2012 (except reissue applications), the inventor’s oath or declaration can be postponed until the application is in condition for allowance, provided certain conditions are met:
- An application data sheet (ADS) in compliance with 37 CFR 1.76 must be filed identifying each inventor by their legal name, mailing address, and residence (if different from mailing address)
- The inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid
The MPEP states: For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.53(f)(3).
This provision allows applicants more flexibility in completing the application requirements, but it’s important to ensure the oath or declaration is filed before paying the issue fee to avoid abandonment.
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Can the inventor’s oath or declaration be submitted after filing the patent application?
Yes, the inventor’s oath or declaration can be submitted after filing the patent application. The MPEP 602.01(a) states:
“The inventor’s oath or declaration may be submitted after the application filing date. If the oath or declaration is filed after the application filing date, it must be accompanied by the surcharge under 37 CFR 1.16(f).”
However, it’s important to note:
- The application must still name each inventor at the time of filing
- An application data sheet (ADS) under 37 CFR 1.76 must be submitted with the application filing
- The oath or declaration should be submitted no later than the date on which the issue fee is paid
Submitting the oath or declaration after filing may incur additional fees and potentially delay the examination process.
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Yes, the filing of an inventor’s oath or declaration can be postponed under certain conditions. According to the MPEP:
If an application data sheet has been submitted, applicant may postpone the filing of the inventor’s oath or declaration until the application is in condition for allowance for applications filed on or after September 16, 2012.
This provision allows applicants more flexibility in the timing of submitting the inventor’s oath or declaration. However, it’s important to note that the oath or declaration must be submitted no later than the date on which the issue fee is paid, as required by 35 U.S.C. 115(f).
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Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:
For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.
However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.
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.
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Yes, some deficiencies or inaccuracies in an inventor’s oath or declaration can be corrected using an Application Data Sheet (ADS). The MPEP states: “Some deficiencies or inaccuracies can be corrected with an application data sheet (ADS) in accordance with 37 CFR 1.76.” For more detailed information on using an ADS, the MPEP refers to MPEP ยง 601.05.
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No, new matter cannot be introduced into a nonprovisional application through a supplemental oath or declaration. This is explicitly stated in MPEP 603:
37 CFR 1.67(d) contains the provision of former 37 CFR 1.67(b) that no new matter may be introduced into a nonprovisional application after its filing date even if an inventor’s oath or declaration is filed to correct deficiencies or inaccuracies present in the earlier-filed oath or declaration.
This rule is consistent with the general principle in patent law that new matter cannot be added to an application after its filing date. The purpose of a supplemental oath or declaration is to correct deficiencies or inaccuracies in the original filing, not to introduce new subject matter.
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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.
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Yes, you can use a copy of an oath or declaration from a prior application in certain continuing applications. According to MPEP 602.05:
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.
For applications filed before September 16, 2012: A continuation or divisional application filed before September 16, 2012 under 37 CFR 1.53(b) (other than a continuation-in-part (CIP)) may be filed with a copy of the oath or declaration from the prior nonprovisional application.
However, it’s important to note that the requirements for oaths and declarations may differ based on the filing date, and a new oath or declaration may be necessary in some cases.
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Can I file a divisional application without a new oath or declaration?
Yes, you can file a divisional application without a new oath or declaration under certain conditions. According to MPEP 201.06(c):
“Under 37 CFR 1.63(d), a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) if: (1) the prior nonprovisional application contained an oath or declaration as prescribed by 37 CFR 1.63 that was executed by or with respect to the inventor and was signed in compliance with 37 CFR 1.64; and (2) the divisional application was filed by all or by fewer than all of the inventors named in the prior application.”
This provision simplifies the filing process for divisional applications, allowing inventors to use the oath or declaration from the original application, provided the specified conditions are met.
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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.
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Yes, an oath or declaration can be filed after the application filing date. However, there are important considerations:
- A surcharge may be required if the oath or declaration is not present on the filing date.
- The application must be in condition for allowance before the oath or declaration is filed to avoid abandonment.
- The oath or declaration must still comply with 37 CFR 1.63, even if filed after the application date.
As stated in MPEP 602.01(a): “If an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each inventor has not been submitted at the time of filing, the Office will send a Notice to File Missing Parts of Nonprovisional Application indicating that the application lacks the oath or declaration and give a period of time within which to file the oath or declaration.”
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Can an inventor’s oath or declaration from a parent application be used in a divisional application?
Yes, an inventor’s oath or declaration from a parent application can often be used in a divisional application. According to MPEP 201.06(c):
‘In accordance with 37 CFR 1.63(d), a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) if: (1) the divisional application claims are directed to subject matter disclosed in the prior-filed application; (2) a copy of the inventor’s oath or declaration from the prior-filed application is provided for the divisional application; and (3) the prior-filed application contains a statement by the applicant that any required oath or declaration, including any substitute statement under 37 CFR 1.64 or assignment-statement under pre-AIA 37 CFR 1.63(e), has been filed.’
This provision simplifies the filing process for divisional applications by allowing the reuse of the original oath or declaration, provided certain conditions are met. However, it’s important to ensure that all inventors named in the divisional application are covered by the oath or declaration from the parent application.
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Generally, an inventor’s oath or declaration should not be amended after signing. The MPEP clearly states:
The wording of an oath or declaration should not be amended, altered or changed in any manner after it has been signed.
If there are issues with the oath or declaration, the proper course of action is typically to submit a new one. As the MPEP notes:
If the wording is not correct or if all of the required affirmations have not been made, or if it has not been properly subscribed to, a new oath or declaration should be submitted.
However, in some cases, minor deficiencies can be corrected without submitting a new oath or declaration. For example, if the oath does not set forth evidence that the notary was acting within their jurisdiction at the time the oath is administered the oath, a certificate of the notary that the oath was taken within their jurisdiction will correct the deficiency.
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No, an attorney cannot sign an oath or declaration on behalf of an inventor, even if they have been given power of attorney to do so. This rule applies to applications filed before September 16, 2012.
According to MPEP ยง 602.08(b), “The oath or declaration may not be signed by an attorney on behalf of the inventor, even if the attorney has been given a power of attorney to do so.” This is supported by legal precedents, including:
- Opinion of Hon. Edward Bates, 10 Op. Atty. Gen. 137 (1861)
- Staeger v. Commissioner of Patents and Trademarks, 189 USPQ 272 (D.D.C. 1976)
- In re Striker, 182 USPQ 507 (PTO Solicitor 1973)
These cases affirm that an oath or declaration signed by an attorney on behalf of the inventor is defective unless the attorney has a proprietary interest in the invention.
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Yes, an applicant can submit a copy of an inventor’s oath or declaration from a prior application under certain conditions. According to MPEP 602.01(a):
An applicant may submit an inventor’s oath or declaration meeting the requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in an earlier-filed application, and submit a copy of such oath or declaration in a later-filed application that claims the benefit of the earlier application under 35 U.S.C. 120, 121, 365(c), or 386(c).
However, there are specific requirements for using a copy:
- The oath or declaration from the earlier application must comply with the current requirements.
- The copy must be accompanied by a statement requesting its use and confirming that the executed oath or declaration is still accurate.
- The earlier application must be specifically referenced.
This provision can save time and effort in subsequent related applications, but applicants must ensure all conditions are met for the copy to be accepted.
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Can an applicant postpone filing the inventor’s oath or declaration in a patent application?
Yes, an applicant can postpone filing the inventor’s oath or declaration in a patent application under certain conditions. According to MPEP 602.01(a):
“An applicant may postpone filing the inventor’s oath or declaration until the application is otherwise in condition for allowance if the applicant is an assignee or a person to whom the inventor is under an obligation to assign the invention.”
However, it’s important to note that the oath or declaration (or an acceptable substitute statement) must be filed no later than the date on which the issue fee is paid. If not filed by then, the application will be regarded as abandoned.
Note: This postponement option is only available for applications filed on or after September 16, 2012, under the America Invents Act (AIA).
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Yes, a provisional application can be filed without an oath or declaration. According to MPEP 601.01(b):
Quote: “A provisional application does not require a claim or oath or declaration.”
This is one of the key differences between provisional and nonprovisional applications. The simplified filing requirements for provisional applications make them a useful tool for quickly establishing a priority date. However, it’s important to remember that:
- A provisional application cannot mature into a patent
- To claim the benefit of a provisional application, a nonprovisional application must be filed within one year
When filing the subsequent nonprovisional application, an oath or declaration will be required as part of the complete application.
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Yes, a patent application can be filed without an oath or declaration initially. According to MPEP 602:
‘An oath or declaration is not required for a provisional application filed under 35 U.S.C. 111(b) and 37 CFR 1.53(c). Oaths or declarations are required for design applications, plant applications, reissue applications, and nonprovisional utility patent applications filed on or after September 16, 2012, but the filing of the oath or declaration may be postponed until after the application is otherwise in condition for allowance.’
However, it’s important to note that while the filing can be postponed, the oath or declaration must be submitted before the application can be allowed. The USPTO will issue a Notice to File Missing Parts if the oath or declaration is missing, giving the applicant a time period to submit it.
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Yes, a non-signing inventor can later join the patent application. According to 37 CFR 1.64(f):
“A nonsigning inventor or legal representative may subsequently join in the application by submitting an oath or declaration under ยง 1.63.“
However, it’s important to note that this subsequent submission does not give the non-signing inventor or legal representative the power to revoke or grant a power of attorney if the application was filed under 37 CFR 1.43, 1.45, or 1.46.
This provision allows for flexibility in cases where an inventor’s circumstances may change after the initial filing of the application.
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Can a legal representative sign the oath or declaration for an unavailable joint inventor?
Yes, in certain circumstances, a legal representative can sign the oath or declaration for an unavailable joint inventor. According to MPEP 409.03(a):
‘If an inventor is deceased or legally incapacitated, the legal representative of the inventor may sign the oath or declaration as the inventor.’
The legal representative must provide proof of their authority to act on behalf of the unavailable inventor. This might include:
- Death certificate and letters testamentary for a deceased inventor
- Court order appointing a guardian for a legally incapacitated inventor
It’s important to note that this provision applies only to deceased or legally incapacitated inventors, not to those who are simply unavailable or unwilling to sign.
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No, a copy of the original oath or declaration cannot be used in a continuation or divisional application filed under 37 CFR 1.53(b). A new oath or declaration must be filed.
According to MPEP 602.02: ‘A new oath or declaration in compliance with 37 CFR 1.63 or 1.67 is required in a continuation or divisional application filed under 37 CFR 1.53(b), regardless of whether a copy of the oath or declaration from the prior application is submitted.’
This requirement ensures that the inventors reaffirm their commitment to the claims in the new application, which may differ from those in the parent application.
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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 ยง 1.51(b)(2) and ยง 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.
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Patent Procedure (83)
The signing requirements for a supplemental oath or declaration depend on the nature of the correction being made. According to MPEP 603:
37 CFR 1.67(b) provides that a supplemental inventor’s oath or declaration under 37 CFR 1.67 must be executed by the person whose inventor’s oath or declaration is being withdrawn, replaced, or otherwise corrected.
For applications filed before September 16, 2012, the MPEP provides more detailed guidance:
- If the correction relates to all inventors or applicants, all must sign.
- If the correction relates to only certain inventors or applicants, only those to whom the correction relates need to sign.
In cases where an inventor is unable or unwilling to sign, the requirement for that inventor to sign the supplemental declaration may be suspended or waived in accordance with 37 CFR 1.183.
In such cases, joint inventors or parties with sufficient proprietary interest may sign on behalf of the non-signing inventor.
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For patent applications filed before September 16, 2012, the oath or declaration can be administered by various authorized individuals, depending on the location. According to pre-AIA 35 U.S.C. 115:
- Within the United States: Any person authorized by law to administer oaths
- In a foreign country:
- A diplomatic or consular officer of the United States authorized to administer oaths
- An officer having an official seal and authorized to administer oaths in the foreign country, whose authority is proved by a certificate of a U.S. diplomatic or consular officer
- An official designated by a foreign country that, by treaty or convention, accords like effect to apostilles of designated officials in the United States
The law states: Such oath is valid if it complies with the laws of the state or country where made.
This provision ensures flexibility in oath administration while maintaining legal validity across different jurisdictions.
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For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if:
- An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application
- A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed
However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).
For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).
A new oath or declaration is required in a patent application under the following circumstances:
- When filing a continuation or divisional application
- When filing a continuation-in-part application
- To correct inventorship in an application
- When the original oath or declaration was defective
According to MPEP 602.02: ‘A new oath or declaration is required in a continuation or divisional application filed under 37 CFR 1.53(b) or in a continuation-in-part application.’ Additionally, the MPEP states that ‘A new oath or declaration in compliance with 37 CFR 1.63 or 1.67 is required in a continuation or divisional application filed under 37 CFR 1.53(b), regardless of whether a copy of the oath or declaration from the prior application is submitted.’
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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.
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An applicant can submit a new inventor’s oath or declaration to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration. This is explicitly stated in the MPEP: “Applicant may submit a new inventor’s oath or declaration to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration.” This provision is supported by 37 CFR 1.67(a).
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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.
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If an inventor cannot comprehend the documents related to their oath or declaration, the MPEP 602.06 provides guidance:
“If the documents are in a language the individual cannot comprehend, the documents may be explained to him or her so that he or she is able to understand them.”
This means that the content of the documents can be explained to the inventor in a language they understand, allowing them to make an informed oath or declaration. It’s crucial that the inventor understands the content of the documents they are swearing to or declaring, even if they cannot read the original language.
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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.
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Venue is a crucial aspect of patent oaths and declarations. MPEP 602 states, “That portion of an oath or affidavit indicating where the oath is taken is known as the venue. […] Venue and notary jurisdiction must correspond or the oath is improper.” This means that the location where the oath is taken must match the jurisdiction of the notary or official administering the oath. The MPEP further advises, “The oath should show on its face that it was taken within the jurisdiction of the certifying officer or notary.” Ensuring correct venue information helps establish the validity of the oath or declaration.
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What is the required oath or declaration for a divisional application?
For a divisional application, a new oath or declaration is generally required. However, there are exceptions:
- If the application is filed on or after September 16, 2012, a copy of the oath or declaration from the prior nonprovisional application may be used, provided that it complies with 37 CFR 1.63, 1.64, or 1.67 for the divisional application.
- If the divisional application was filed before September 16, 2012, and the prior application was filed on or after September 16, 2012, a copy of the oath or declaration from the prior application can be used in the divisional application.
As stated in MPEP 201.06: “A new oath or declaration is required in a divisional application filed under 37 CFR 1.53(b), regardless of whether a copy of the oath or declaration from the prior nonprovisional application is used in the divisional application, unless the divisional application is filed on or after September 16, 2012.”
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What is the procedure for filing a continuation or divisional application without a new oath or declaration?
When filing a continuation or divisional application, a new oath or declaration is not always required. According to MPEP 602.05, the following procedure can be followed:
- File a copy of the oath or declaration from the prior application.
- Include a statement requesting the filing of the continuation or divisional application without a newly executed oath or declaration.
- Pay the filing fee for the continuation or divisional application.
The MPEP states: ‘The applicant may file a continuation or divisional application by filing a copy of the oath or declaration from the prior application, accompanied by a statement requesting the filing of the continuation or divisional application without a newly executed oath or declaration and payment of the filing fee.’
This procedure simplifies the filing process for certain types of continuing applications, reducing paperwork and potentially saving time for applicants.
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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.
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The deadline for submitting an inventor’s oath or declaration in a patent application filed on or after September 16, 2012, is the date on which the issue fee is paid. This is stated in MPEP 602.01(a):
For applications filed on or after September 16, 2012, the timing of the submission of the inventor’s oath or declaration has been liberalized. The inventor’s oath or declaration is no longer required to be submitted prior to the filing of the application. Rather, the inventor’s oath or declaration may be postponed until payment of the issue fee.
However, it’s important to note that while the oath or declaration can be submitted later, the application must still include the names of all inventors at the time of filing. If the oath or declaration is not submitted with the initial application, a substitute statement may be required.
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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 ยง 1.63, or a substitute statement in compliance with ยง 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 ยง 602.01(a) for oath or declaration requirements and MPEP ยง 604 for substitute statement requirements.
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MPEP 602.07 is titled ‘Oath or Declaration Filed in United States as a Designated Office’. This section provides guidance on the requirements for oaths or declarations filed in the United States Patent and Trademark Office (USPTO) when it acts as a designated office for international patent applications under the Patent Cooperation Treaty (PCT).
The section directs readers to MPEP ยง 1893.01(e) for more detailed information. This cross-reference suggests that MPEP ยง 1893.01(e) contains more specific instructions or requirements related to oaths or declarations in this context.
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A supplemental oath or declaration is a document that can be submitted to correct deficiencies or inaccuracies in an earlier-filed inventor’s oath or declaration. According to MPEP 603, it is provided for under 35 U.S.C. 115(h) and 37 CFR 1.67.
The MPEP states: 37 CFR 1.67(a) provides that the applicant may submit an inventor’s oath or declaration meeting the requirements of 37 CFR 1.63, 1.64, or 1.62 to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration.
It’s important to note that while corrections can be made, no new matter may be introduced into a nonprovisional application after its filing date even if an inventor’s oath or declaration is filed to correct deficiencies or inaccuracies present in the earlier-filed oath or declaration.
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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 ยง 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.
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A substitute statement is a document that can be filed in place of an oath or declaration when the inventor is deceased, legally incapacitated, cannot be found or reached after diligent effort, or refuses to execute the oath or declaration. According to MPEP 602:
’35 U.S.C. 115(d) provides that ‘the applicant for patent’ may provide a substitute statement under the circumstances described in 35 U.S.C. 115(d)(2). The applicant for patent is defined in 35 U.S.C. 100(g) as ‘the inventor or joint inventors who are applying for a patent through their assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest in the matter.’
The substitute statement must:
- Identify the inventor to whom it relates
- Identify the circumstances permitting the filing of the substitute statement
- Include a statement that the person executing the substitute statement has reviewed and understands the contents of the application
- Include a statement that the person executing the substitute statement acknowledges the duty to disclose information material to patentability
This provision allows for the continuation of the patent application process even when the inventor is unable or unwilling to execute the oath or declaration.
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According to MPEP 201, a nonprovisional application for patent is the standard type of patent application. The MPEP states:
“A nonprovisional application for patent filed under 35 U.S.C. 111(a) must include a specification, including a claim or claims, drawings when necessary, an oath or declaration, and the prescribed filing fee, search fee, examination fee and application size fee.”
This type of application is examined by the USPTO and can potentially lead to the grant of a patent. It requires a detailed description of the invention, claims defining the scope of protection sought, and often includes drawings to illustrate the invention.
For more information on declaration, visit: declaration.
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For more information on nonprovisional application, visit: nonprovisional application.
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When correcting an erroneous assignment, the affidavit or declaration submitted to the USPTO should contain specific information. According to MPEP 323.01(c), the affidavit should include:
- Identification of yourself as the correct owner
- A statement that the previously recorded document was submitted with erroneous information
- The reel and frame number of the previously recorded document
- A summary of the true chain of title
- A statement that the original applicant, patentee, or last correct assignee has been and continues to be the owner of the application or patent at issue
The MPEP specifically states: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change, and a statement that the original applicant or patentee or last correct assignee has been, and continues to be, the owner of the application, or patent at issue.
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For patent applications filed before September 16, 2012, the oath or declaration must include specific information about foreign applications if not provided in an application data sheet. According to pre-AIA 37 CFR 1.63(c)(2), the oath or declaration must identify:
- Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made
- Any foreign application having a filing date before that of the application on which priority is claimed
The MPEP elaborates: The applicant is required to recite all foreign applications filed prior to the application on which priority is claimed. It is required to give the foreign application number and name of the country or office in which filed, as well as the filing date of each foreign application to which priority is claimed.
This information is crucial for establishing priority claims and ensuring compliance with patent law requirements regarding prior foreign filings.
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What information must be included in an oath or declaration for an unavailable joint inventor?
When filing an oath or declaration for an unavailable joint inventor, specific information must be included. According to MPEP 409.03(a), the oath or declaration must contain:
- The name of the unavailable inventor
- A statement that the inventor is unavailable and the reason for unavailability
- The last known address of the unavailable inventor
Additionally, the MPEP states:
‘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.’
It’s crucial to provide as much detail as possible about the efforts made to contact the unavailable inventor and any responses received. This information helps the USPTO understand the situation and process the application appropriately.
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If the USPTO finds an inventor’s oath or declaration defective, the following actions may occur:
- For non-reissue applications filed before allowance, non-examiner staff will review the oath or declaration and may send an informational notice about deficiencies.
- For applications at or after allowance, non-examiner staff will review the oath or declaration and send a requirement to correct any deficiencies.
- If the oath or declaration is not submitted by the time of allowance, a notice requiring it may be sent with the Notice of Allowability.
As stated in the MPEP, The required inventor’s oath or declaration must be submitted no later than the date on which the issue fee is paid. See 35 U.S.C. 115(f).
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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.
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What happens if an inventor refuses to sign the oath or declaration for a patent application?
If an inventor refuses to sign the oath or declaration for a patent application, the applicant may file a substitute statement in lieu of an oath or declaration. According to MPEP 602.01(a):
“A substitute statement may be used in lieu of an oath or declaration if the inventor is deceased, legally incapacitated, cannot be found or reached after diligent effort, or refuses to execute the oath or declaration.”
The substitute statement must be signed by an applicant under 37 CFR 1.43, 1.45, or 1.46. It must:
- Identify the inventor to whom it relates
- Identify the person executing the substitute statement and their relationship to the inventor
- Include a statement that the person executing the substitute statement believes the named inventor to be the original inventor
- State that the application was made or authorized to be made by the person executing the substitute statement
- State the permitted basis for filing the substitute statement (in this case, the inventor’s refusal to sign)
It’s important to note that attempts to reach the inventor and obtain their signature should be documented, as the USPTO may require evidence of the inventor’s refusal to sign.
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What happens if an inventor refuses to sign the inventor’s oath or declaration?
If an inventor refuses to sign the inventor’s oath or declaration, the application may still be filed under certain circumstances. According to MPEP 602.01(a):
“If an inventor refuses to execute an oath or declaration or cannot be found or reached after diligent effort, the applicant under 37 CFR 1.43, 1.45 or 1.46 may execute an oath or declaration naming the non-signing inventor.”
In such cases, the applicant must:
- Submit a substitute statement in lieu of an oath or declaration
- Provide evidence of the inventor’s refusal to sign or unavailability
- Explain the efforts made to contact the inventor
The Office will evaluate the circumstances and may accept the application without the non-signing inventor’s oath or declaration.
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What happens if an inventor refuses to sign an oath or declaration?
If an inventor refuses to sign an oath or declaration, the application may still proceed under certain circumstances. According to MPEP 602.09:
“If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of themselves and the nonsigning inventor.”
In such cases, the applicant must:
- File an oath or declaration on behalf of the nonsigning inventor
- Provide a statement of facts explaining the situation
- Show that the nonsigning inventor’s last known address has been stated
- Demonstrate that notice of the filing of the application has been provided to the nonsigning inventor
This process allows the application to move forward despite the lack of cooperation from one inventor.
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What happens if an inventor dies or becomes legally incapacitated after an application is filed?
If an inventor dies or becomes legally incapacitated after an application is filed, the legal representative of the deceased or incapacitated inventor may make an oath or declaration in compliance with 37 CFR 1.64. The MPEP 409.01(a) states:
“If an inventor dies after an application naming the inventor is filed, the personal representative of the inventor’s estate may make an oath or declaration in compliance with 37 CFR 1.64.”
This process ensures that the application can continue to be prosecuted even if the inventor is no longer able to participate. The legal representative must provide evidence of their authority to act on behalf of the deceased or incapacitated inventor.
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According to MPEP 602.08(c), when a specification is filed attached to an oath or declaration after the initial application filing date, the USPTO follows a specific procedure:
Any specification that is filed attached to an oath or declaration on a date later than the application filing date will not be compared with the specification submitted on filing.
Furthermore, the MPEP states: Absent any statement(s) to the contrary, the ‘attached’ specification will be presumed to be a copy of the specification and any amendments thereto, which were filed in the USPTO in order to obtain a filing date for the application.
This means that the USPTO will not verify if the later-submitted specification matches the original filing. Instead, they assume it’s a copy of the original specification plus any amendments, unless explicitly stated otherwise. This practice helps streamline the application process and avoid confusion between different versions of the specification.
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When filing a patent application as an assignee or obligated assignee, specific documentation is required to establish the right to apply for the patent. According to MPEP 409.05:
Quote: ‘The assignee or obligated assignee who files the application must comply with the oath or declaration requirements of 37 CFR 1.63, including meeting the citizenship requirement of 37 CFR 1.63(a)(3).’
The required documentation includes:
- A properly executed oath or declaration from the inventors
- An assignment document or proof of obligation to assign
- Application Data Sheet (ADS) identifying the assignee as the applicant
Additionally, if filing as an obligated assignee, you may need to provide evidence of the obligation to assign, such as an employment agreement or contract. It’s important to ensure all documentation is complete and accurate to avoid potential issues with the patent application process.
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The signature requirements for inventor’s oaths or declarations are as follows:
- There is no requirement for a signature to be made in any particular manner.
- Inventors can use titles such as ‘Dr.’ in their signatures, but these won’t appear in the printed patent.
- Non-English character signatures are accepted.
- If an inventor cannot write, their mark must be witnessed.
According to MPEP ยง 602.08(b), “There is no requirement that a signature be made in any particular manner.” The section also states, “It is permissible for an applicant to use a title of nobility or other title, such as ‘Dr.’, in connection with their signature. The title will not appear in the printed patent.“
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For continuing applications filed on or after September 16, 2012, the following requirements apply:
- A copy of an oath or declaration or substitute statement from the prior nonprovisional application can be used, provided it complies with 37 CFR 1.63 or 37 CFR 1.64.
- The oath or declaration must comply with 35 U.S.C. 115 and the relevant CFR sections in effect for applications filed on or after September 16, 2012.
- It must include a statement that the application was made or authorized to be made by the person executing the oath or declaration.
As stated in the MPEP, “a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet 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.”
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When filing a patent application with at least one unavailable joint inventor under pre-AIA 37 CFR 1.47(a), the following requirements must be met:
- All available joint inventors must make an oath or declaration for themselves and on behalf of the nonsigning inventor.
- Proof must be provided that the nonsigning inventor cannot be found or refuses to execute the application.
- The last known address of the nonsigning inventor must be stated.
As stated in MPEP 409.03(a):
“An application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements: (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 […] and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64.”
It’s important to note that this section is not applicable to applications filed on or after September 16, 2012.
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The MPEP 201.06(c) outlines the requirements for filing a divisional or continuation application without an executed oath or declaration:
’37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a continuation or divisional application filed by all or by fewer than all of the inventors named in a prior nonprovisional application containing an oath or declaration as required by 37 CFR 1.63, provided that a copy of the executed oath or declaration filed in the prior application is submitted for the continuation or divisional application and the specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application.’
To file without a new oath or declaration:
- Submit a copy of the executed oath or declaration from the prior application
- Ensure the new application contains no new matter
- File a copy of the specification and drawings from the prior application
This procedure allows for expedited filing while maintaining the integrity of the oath or declaration requirements.
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For continuation or divisional applications filed before September 16, 2012 under 37 CFR 1.53(b) (excluding continuation-in-part applications), applicants could file using a copy of the oath or declaration from the prior nonprovisional application. This is supported by the MPEP, which states:
“A continuation or divisional application filed before September 16, 2012 under 37 CFR 1.53(b) (other than a continuation-in-part (CIP)) may be filed with a copy of the oath or declaration from the prior nonprovisional application.”
This provision simplified the filing process for certain types of continuing applications by allowing the use of previously submitted documents.
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What are the requirements for an oath or declaration in a reissue application?
In a reissue application, the oath or declaration must comply with specific requirements outlined in MPEP 1414. The MPEP states:
“The reissue oath/declaration must include a statement that the applicant believes the original patent to be wholly or partly inoperative or invalid.”
Additionally, the oath or declaration must:
- Identify at least one error being relied upon as the basis for reissue
- State that all errors being corrected in the reissue application arose without any deceptive intention on the part of the applicant
- Be signed by the inventor(s) or the assignee of the entire interest
It’s important to note that the requirements for a reissue oath or declaration are more stringent than those for a regular patent application due to the nature of reissue proceedings.
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For applications filed before September 16, 2012, the requirements for an inventor’s oath or declaration are governed by pre-AIA 37 CFR 1.63. The oath or declaration must:
- Be executed (signed) in accordance with pre-AIA 37 CFR 1.66 or pre-AIA 37 CFR 1.68.
- Identify each inventor by full name, including family name and at least one given name, without abbreviation.
- Identify the country of citizenship of each inventor.
- State that the person making the oath or declaration believes the named inventor(s) to be the original and first inventor(s) of the subject matter claimed.
- State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims.
- Acknowledge the duty to disclose to the Office all information known to be material to patentability as defined in 37 CFR 1.56.
These requirements are different from those for applications filed on or after September 16, 2012, and it’s important to use the correct version of the oath or declaration based on the application’s filing date.
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A substitute statement in lieu of an oath or declaration must:
- Comply with the requirements of 37 CFR 1.63, identifying the inventor or joint inventor with respect to whom a substitute statement is executed, and stating upon information and belief the facts which such inventor is required to state.
- Identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor.
- Identify the circumstances permitting the person to execute the substitute statement.
- Include an acknowledgement that any willful false statement made in the substitute statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than 5 years, or both.
As stated in MPEP 604: ‘A substitute statement under 37 CFR 1.64 must: (1) Comply with the requirements of 37 CFR 1.63(a), identifying the inventor or joint inventor with respect to whom a substitute statement in lieu of an oath or declaration is executed, and stating upon information and belief the facts which such inventor is required to state.’
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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 ยง 201.08 and ยง 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.
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What are the requirements for a complete patent application?
A complete patent application must include the following elements:
- Specification (including a description and claim(s))
- Drawing(s) (when necessary)
- Oath or declaration
- Filing, search, and examination fees
As stated in MPEP 601.01: ‘The application for patent as filed must include a specification as prescribed by 35 U.S.C. 112, at least one claim as prescribed by 35 U.S.C. 112, and, in applications other than design applications, any drawing referred to in the specification or required by 35 U.S.C. 113.’ Additionally, the applicant must submit an oath or declaration and pay the necessary fees to complete the application.
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The MPEP 602.08(c) warns about a serious potential consequence of misidentifying an application:
Further an oath or declaration attached to a cover letter referencing an incorrect application may not become associated with the correct application and, therefore, could result in the abandonment of the correct application.
This means that if you submit an oath or declaration with a cover letter that references the wrong application number or details, it might not be properly associated with the intended application. As a result, the correct application could be considered abandoned due to lack of a proper oath or declaration.
To avoid this issue, it’s crucial to double-check all application identifiers and ensure that cover letters, oaths, and declarations accurately reference the intended application. If you discover such an error, you should contact the USPTO promptly to rectify the situation and prevent unintended abandonment.
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According to MPEP 602.08(c), there are three acceptable combinations of information for identifying a patent application in an oath or declaration filed on the application filing date:
- Name of inventor(s) and reference to an attached specification or application
- Name of inventor(s) and attorney docket number on the specification as filed
- Name of inventor(s) and title of the invention on the specification as filed
The MPEP states: Filing dates are granted on applications filed without an inventor’s oath or declaration in compliance with 37 CFR 1.63
. This means that an application can receive a filing date even if the oath or declaration is not initially included.
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A complete nonprovisional patent application filed under 35 U.S.C. 111(a) comprises the following components:
- A specification, including claims, as prescribed by 35 U.S.C. 112
- Drawings as prescribed by 35 U.S.C. 113
- An oath or declaration as prescribed by 35 U.S.C. 115
- The prescribed filing fee, search fee, examination fee, and application size fee
As stated in the MPEP: “A complete application filed under 35 U.S.C. 111(a) comprises a specification, including claims, as prescribed by 35 U.S.C. 112, drawings as prescribed by 35 U.S.C. 113, an oath or declaration as prescribed by 35 U.S.C. 115, and the prescribed filing fee, search fee, examination fee and application size fee.”
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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 ยง 201.04.
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A valid inventor’s oath or declaration must include several key components as outlined in the MPEP:
- Inventor bibliographic information (see MPEP ยง 602.08(a))
- The name of the inventor or each joint inventor
- Signatures of each inventor, except as otherwise provided
- Identification of the application to which it is directed
The MPEP states: The inventor’s oath or declaration must include certain inventor bibliographic information (see MPEP ยง 602.08(a)), name the inventor or each joint inventor and except as otherwise provided be signed by each inventor (see MPEP ยง 602.08(b)), and identify the application to which it is directed (see MPEP ยง 602.08(c)).
It’s important to ensure all these elements are present and correct to avoid potential issues with the patent application process.
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Failing to submit an inventor’s oath or declaration before the issue fee is paid can have serious consequences for a patent application. According to MPEP 602.01(a):
If an application does not include an oath or declaration by the inventor or a substitute statement, the Office will issue a notice requiring the applicant to file the inventor’s oath or declaration no later than the date on which the issue fee is paid.
The consequences of not complying with this requirement include:
- Application Abandonment: If the oath or declaration is not submitted by the time the issue fee is paid, the application will be regarded as abandoned.
- Additional Fees: To revive an abandoned application, the applicant must pay additional fees and file a petition for revival.
- Delay in Patent Grant: The patent will not be granted until the proper oath or declaration is submitted and the application is revived.
- Potential Loss of Patent Rights: In extreme cases, failure to timely submit the oath or declaration could result in a loss of patent rights if statutory deadlines are missed.
To avoid these issues, applicants should ensure that a proper inventor’s oath or declaration is submitted well before the issue fee payment deadline.
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Failing to submit a proper oath or declaration in a patent application can have serious consequences:
- The application may be considered incomplete and subject to abandonment.
- A Notice to File Missing Parts will be issued, requiring submission of the oath or declaration.
- A surcharge may be required for late submission.
- The application will not be examined until a proper oath or declaration is received.
According to MPEP 602.01(a): “If the application is in condition for allowance but does not include an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, the Office will issue a ‘Notice of Allowability’ (PTOL-37) requiring the oath or declaration.” Failure to comply with this notice can result in abandonment of the application.
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Yes, each separate oath or declaration by an inventor should be complete in itself. The MPEP clearly states: “Each separate oath or declaration by an inventor should be complete in itself.” This guideline ensures that each inventor’s oath or declaration can stand alone and provide all necessary information without relying on other documents. This is particularly important for applications filed on or after September 16, 2012, where joint inventors may execute separate oaths or declarations.
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Changes in inventorship for continuation or divisional applications filed under 37 CFR 1.53(b) could be handled in two ways:
- Filing with a copy of an oath or declaration from a prior application and a statement requesting the deletion of non-inventors.
- Filing with a newly executed oath or declaration naming the correct inventive entity.
The MPEP states:
“If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(b), the continuation or divisional application may either be filed (A) with a copy of an oath or declaration from a prior application and a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application (see pre-AIA 37 CFR 1.63(d)), or (B) with a newly executed oath or declaration naming the correct inventive entity.”
This provision allowed applicants to address changes in inventorship efficiently when filing continuation or divisional applications.
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For inventors who have only a single name, there are specific guidelines for presenting their name in patent applications:
- The single name should be listed in the Last Name field.
- The First Name field should be left blank.
- A period should be placed in the First Name field if the USPTO computer system requires a first name entry.
According to MPEP 602.08(b):
If an inventor’s name ‘includes’ only a single name, it should be placed in the Last Name box of the inventor data sheet (37 CFR 1.76(b)(1)) or inventor’s oath or declaration (37 CFR 1.63(a)(1)), with the First Name box blank or filled with a period (if required by the computer system to be a non-blank field).
This ensures proper recording and processing of the inventor’s name in the patent application system.
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Handling changes in inventorship in a continuing application depends on the filing date of the application and the nature of the change. Here are the key points:
- For applications filed on or after September 16, 2012:
- Inventorship is determined by the Application Data Sheet (ADS) if filed before or with the oath/declaration copy.
- If no ADS is filed, inventorship is based on the oath/declaration copy from the earlier application.
- New joint inventors must provide a new oath or declaration.
- For applications filed before September 16, 2012:
- To remove an inventor, file a copy of the prior oath/declaration with a statement requesting deletion of the non-inventor’s name.
- Alternatively, file a new oath/declaration with the correct inventive entity.
- For continuation-in-part applications, a new oath/declaration is typically required.
According to MPEP 602.05(b): If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(b), the continuation or divisional application may either be filed (A) with a copy of an oath or declaration from a prior application and a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application, or (B) with a newly executed oath or declaration naming the correct inventive entity.
Always ensure compliance with the specific requirements based on your application’s filing date and type.
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How does the oath or declaration work in divisional applications?
In divisional applications, the oath or declaration process is simplified to reduce the burden on applicants. According to MPEP 201.06(c):
37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) that contains the subject matter described in the prior nonprovisional application, provided a copy of the executed oath or declaration filed in the prior nonprovisional application is submitted.
Key points about the oath or declaration in divisional applications:
- A new oath or declaration is not required if the divisional application contains the same subject matter as the parent application.
- A copy of the executed oath or declaration from the parent application can be submitted.
- The copy must show the USPTO seal or stamp indicating it was received.
- If the inventorship changes, a new oath or declaration may be required.
This provision under 37 CFR 1.63(d) streamlines the filing process for divisional applications while ensuring proper inventorship documentation.
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The inventorship in a continuing application can be the same as or different from the prior application, depending on the circumstances:
- For applications filed on or after September 16, 2012, the inventorship is determined by the application data sheet or the copy of the oath/declaration from the earlier-filed application.
- If the continuing application names a new joint inventor, they must provide a new oath or declaration.
The MPEP states: 37 CFR 1.63(d)(2) provides that 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 37 CFR 1.33(b) stating the name of each inventor in the continuing application.
For applications filed before September 16, 2012, different rules apply regarding the deletion or addition of inventors in continuing applications.
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In patent applications filed before September 16, 2012, an Application Data Sheet (ADS) can significantly affect the oath or declaration requirements. Specifically:
- An ADS can eliminate the need for certain information in the oath or declaration.
- It allows for the submission of some bibliographic data without an oath or declaration.
The MPEP 601.05(b) states: “If an application data sheet is used in an application filed before September 16, 2012 (in compliance with pre-AIA 37 CFR 1.76) to supply or change the information in 37 CFR 1.63(c), and the oath or declaration under 37 CFR 1.63 refers to the application data sheet, the oath or declaration does not need to be supplemented to include the information supplied in the application data sheet.”
This means that if the oath or declaration references the ADS, it doesn’t need to be updated with information already provided in the ADS, streamlining the application process.
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For patent applications filed on or after September 16, 2012, joint inventors have more flexibility in executing oaths or declarations. The MPEP states: “For applications filed on or after September 16, 2012, joint inventors may execute separate oaths or declarations in which only the person executing the oath or declaration is identified if an ADS is filed that provides the required inventor information.” This means each inventor can submit their own oath or declaration, naming only themselves, as long as a complete Application Data Sheet (ADS) is filed with all inventor information. However, if such an ADS is not filed, then each oath or declaration must name all of the inventors, as per 37 CFR 1.63(a) and (b).
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For oaths or declarations filed after the application filing date, MPEP 602.08(c) provides several acceptable methods for identifying the application:
- Application number (series code and serial number, e.g., 08/123,456)
- Serial number and filing date
- International application number
- International registration number for design applications
- Attorney docket number on the original specification
- Title of the invention from the original specification, with reference to an attached specification
- Title of the invention from the original specification, with a cover letter identifying the application
The MPEP emphasizes that Absent any statement(s) to the contrary, it will be presumed that the application filed in the USPTO is the application which the inventor(s) executed by signing the oath or declaration.
This presumption helps ensure proper association of documents with the correct application.
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The process for changing the correspondence address in a patent application filed before September 16, 2012, depends on whether an oath or declaration has been filed:
- Before filing an oath or declaration: The correspondence address can be changed by the party who filed the application, including the inventor(s), any patent practitioner named in the transmittal papers, or the assignee who filed the application.
- After filing an oath or declaration: The correspondence address can be changed by a patent practitioner of record, an assignee as provided under pre-AIA 37 CFR 3.71(b), or all of the applicants, unless there’s an assignee of the entire interest who has taken action in the application.
As stated in MPEP 601.03(b): “Where a correspondence address has been established on filing of the application or changed pursuant to pre-AIA 37 CFR 1.33(a)(1) (prior to the filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors), that correspondence address remains in effect upon filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 and can only be subsequently changed pursuant to pre-AIA 37 CFR 1.33(a)(2).”
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For applications filed on or after September 16, 2012, an applicant can file a continuation or divisional application using a copy of an oath or declaration from a prior application if:
- The oath or declaration complies with 35 U.S.C. 115 as revised effective September 16, 2012
- It was executed by or with respect to the inventor in the earlier-filed application
- A copy of the oath, declaration, or substitute statement showing the signature or an indication it was executed is submitted in the continuing application
As stated in the MPEP: For applications filed on or after September 16, 2012, the filing of a continuing application by all or by fewer than all of the inventors named in a prior application without a newly executed oath or declaration is permitted provided that an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement under 37 CFR 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.
It’s important to note that the oath or declaration must meet the current requirements, even if the prior application was filed before September 16, 2012.
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No, the USPTO does not routinely check the date of execution for inventor’s oaths or declarations. The MPEP states:
The Office does not check the date of execution of the oath or declaration and will not require a newly executed oath or declaration based on an oath or declaration being stale (i.e., when the date of execution is more than three months prior to the filing date of the application) or where the date of execution has been omitted.
However, applicants should be aware that they have a continuing duty of disclosure under 37 CFR 1.56. This means that while the USPTO doesn’t check the execution date, applicants are still responsible for ensuring the information in the oath or declaration remains accurate and up-to-date.
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Yes, for applications filed on or after September 16, 2012 (except reissue applications), the inventor’s oath or declaration can be postponed until the application is in condition for allowance, provided certain conditions are met:
- An application data sheet (ADS) in compliance with 37 CFR 1.76 must be filed identifying each inventor by their legal name, mailing address, and residence (if different from mailing address)
- The inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid
The MPEP states: For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.53(f)(3).
This provision allows applicants more flexibility in completing the application requirements, but it’s important to ensure the oath or declaration is filed before paying the issue fee to avoid abandonment.
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Can the inventor’s oath or declaration be submitted after filing the patent application?
Yes, the inventor’s oath or declaration can be submitted after filing the patent application. The MPEP 602.01(a) states:
“The inventor’s oath or declaration may be submitted after the application filing date. If the oath or declaration is filed after the application filing date, it must be accompanied by the surcharge under 37 CFR 1.16(f).”
However, it’s important to note:
- The application must still name each inventor at the time of filing
- An application data sheet (ADS) under 37 CFR 1.76 must be submitted with the application filing
- The oath or declaration should be submitted no later than the date on which the issue fee is paid
Submitting the oath or declaration after filing may incur additional fees and potentially delay the examination process.
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Yes, the filing of an inventor’s oath or declaration can be postponed under certain conditions. According to the MPEP:
If an application data sheet has been submitted, applicant may postpone the filing of the inventor’s oath or declaration until the application is in condition for allowance for applications filed on or after September 16, 2012.
This provision allows applicants more flexibility in the timing of submitting the inventor’s oath or declaration. However, it’s important to note that the oath or declaration must be submitted no later than the date on which the issue fee is paid, as required by 35 U.S.C. 115(f).
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Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:
For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.
However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.
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.
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Yes, some deficiencies or inaccuracies in an inventor’s oath or declaration can be corrected using an Application Data Sheet (ADS). The MPEP states: “Some deficiencies or inaccuracies can be corrected with an application data sheet (ADS) in accordance with 37 CFR 1.76.” For more detailed information on using an ADS, the MPEP refers to MPEP ยง 601.05.
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No, new matter cannot be introduced into a nonprovisional application through a supplemental oath or declaration. This is explicitly stated in MPEP 603:
37 CFR 1.67(d) contains the provision of former 37 CFR 1.67(b) that no new matter may be introduced into a nonprovisional application after its filing date even if an inventor’s oath or declaration is filed to correct deficiencies or inaccuracies present in the earlier-filed oath or declaration.
This rule is consistent with the general principle in patent law that new matter cannot be added to an application after its filing date. The purpose of a supplemental oath or declaration is to correct deficiencies or inaccuracies in the original filing, not to introduce new subject matter.
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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.
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Yes, you can use a copy of an oath or declaration from a prior application in certain continuing applications. According to MPEP 602.05:
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.
For applications filed before September 16, 2012: A continuation or divisional application filed before September 16, 2012 under 37 CFR 1.53(b) (other than a continuation-in-part (CIP)) may be filed with a copy of the oath or declaration from the prior nonprovisional application.
However, it’s important to note that the requirements for oaths and declarations may differ based on the filing date, and a new oath or declaration may be necessary in some cases.
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Can I file a divisional application without a new oath or declaration?
Yes, you can file a divisional application without a new oath or declaration under certain conditions. According to MPEP 201.06(c):
“Under 37 CFR 1.63(d), a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) if: (1) the prior nonprovisional application contained an oath or declaration as prescribed by 37 CFR 1.63 that was executed by or with respect to the inventor and was signed in compliance with 37 CFR 1.64; and (2) the divisional application was filed by all or by fewer than all of the inventors named in the prior application.”
This provision simplifies the filing process for divisional applications, allowing inventors to use the oath or declaration from the original application, provided the specified conditions are met.
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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.
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Yes, an oath or declaration can be filed after the application filing date. However, there are important considerations:
- A surcharge may be required if the oath or declaration is not present on the filing date.
- The application must be in condition for allowance before the oath or declaration is filed to avoid abandonment.
- The oath or declaration must still comply with 37 CFR 1.63, even if filed after the application date.
As stated in MPEP 602.01(a): “If an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each inventor has not been submitted at the time of filing, the Office will send a Notice to File Missing Parts of Nonprovisional Application indicating that the application lacks the oath or declaration and give a period of time within which to file the oath or declaration.”
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Can an inventor’s oath or declaration from a parent application be used in a divisional application?
Yes, an inventor’s oath or declaration from a parent application can often be used in a divisional application. According to MPEP 201.06(c):
‘In accordance with 37 CFR 1.63(d), a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) if: (1) the divisional application claims are directed to subject matter disclosed in the prior-filed application; (2) a copy of the inventor’s oath or declaration from the prior-filed application is provided for the divisional application; and (3) the prior-filed application contains a statement by the applicant that any required oath or declaration, including any substitute statement under 37 CFR 1.64 or assignment-statement under pre-AIA 37 CFR 1.63(e), has been filed.’
This provision simplifies the filing process for divisional applications by allowing the reuse of the original oath or declaration, provided certain conditions are met. However, it’s important to ensure that all inventors named in the divisional application are covered by the oath or declaration from the parent application.
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Generally, an inventor’s oath or declaration should not be amended after signing. The MPEP clearly states:
The wording of an oath or declaration should not be amended, altered or changed in any manner after it has been signed.
If there are issues with the oath or declaration, the proper course of action is typically to submit a new one. As the MPEP notes:
If the wording is not correct or if all of the required affirmations have not been made, or if it has not been properly subscribed to, a new oath or declaration should be submitted.
However, in some cases, minor deficiencies can be corrected without submitting a new oath or declaration. For example, if the oath does not set forth evidence that the notary was acting within their jurisdiction at the time the oath is administered the oath, a certificate of the notary that the oath was taken within their jurisdiction will correct the deficiency.
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No, an attorney cannot sign an oath or declaration on behalf of an inventor, even if they have been given power of attorney to do so. This rule applies to applications filed before September 16, 2012.
According to MPEP ยง 602.08(b), “The oath or declaration may not be signed by an attorney on behalf of the inventor, even if the attorney has been given a power of attorney to do so.” This is supported by legal precedents, including:
- Opinion of Hon. Edward Bates, 10 Op. Atty. Gen. 137 (1861)
- Staeger v. Commissioner of Patents and Trademarks, 189 USPQ 272 (D.D.C. 1976)
- In re Striker, 182 USPQ 507 (PTO Solicitor 1973)
These cases affirm that an oath or declaration signed by an attorney on behalf of the inventor is defective unless the attorney has a proprietary interest in the invention.
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Yes, an applicant can submit a copy of an inventor’s oath or declaration from a prior application under certain conditions. According to MPEP 602.01(a):
An applicant may submit an inventor’s oath or declaration meeting the requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in an earlier-filed application, and submit a copy of such oath or declaration in a later-filed application that claims the benefit of the earlier application under 35 U.S.C. 120, 121, 365(c), or 386(c).
However, there are specific requirements for using a copy:
- The oath or declaration from the earlier application must comply with the current requirements.
- The copy must be accompanied by a statement requesting its use and confirming that the executed oath or declaration is still accurate.
- The earlier application must be specifically referenced.
This provision can save time and effort in subsequent related applications, but applicants must ensure all conditions are met for the copy to be accepted.
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Can an applicant postpone filing the inventor’s oath or declaration in a patent application?
Yes, an applicant can postpone filing the inventor’s oath or declaration in a patent application under certain conditions. According to MPEP 602.01(a):
“An applicant may postpone filing the inventor’s oath or declaration until the application is otherwise in condition for allowance if the applicant is an assignee or a person to whom the inventor is under an obligation to assign the invention.”
However, it’s important to note that the oath or declaration (or an acceptable substitute statement) must be filed no later than the date on which the issue fee is paid. If not filed by then, the application will be regarded as abandoned.
Note: This postponement option is only available for applications filed on or after September 16, 2012, under the America Invents Act (AIA).
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Yes, a provisional application can be filed without an oath or declaration. According to MPEP 601.01(b):
Quote: “A provisional application does not require a claim or oath or declaration.”
This is one of the key differences between provisional and nonprovisional applications. The simplified filing requirements for provisional applications make them a useful tool for quickly establishing a priority date. However, it’s important to remember that:
- A provisional application cannot mature into a patent
- To claim the benefit of a provisional application, a nonprovisional application must be filed within one year
When filing the subsequent nonprovisional application, an oath or declaration will be required as part of the complete application.
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Yes, a patent application can be filed without an oath or declaration initially. According to MPEP 602:
‘An oath or declaration is not required for a provisional application filed under 35 U.S.C. 111(b) and 37 CFR 1.53(c). Oaths or declarations are required for design applications, plant applications, reissue applications, and nonprovisional utility patent applications filed on or after September 16, 2012, but the filing of the oath or declaration may be postponed until after the application is otherwise in condition for allowance.’
However, it’s important to note that while the filing can be postponed, the oath or declaration must be submitted before the application can be allowed. The USPTO will issue a Notice to File Missing Parts if the oath or declaration is missing, giving the applicant a time period to submit it.
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Yes, a non-signing inventor can later join the patent application. According to 37 CFR 1.64(f):
“A nonsigning inventor or legal representative may subsequently join in the application by submitting an oath or declaration under ยง 1.63.“
However, it’s important to note that this subsequent submission does not give the non-signing inventor or legal representative the power to revoke or grant a power of attorney if the application was filed under 37 CFR 1.43, 1.45, or 1.46.
This provision allows for flexibility in cases where an inventor’s circumstances may change after the initial filing of the application.
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Can a legal representative sign the oath or declaration for an unavailable joint inventor?
Yes, in certain circumstances, a legal representative can sign the oath or declaration for an unavailable joint inventor. According to MPEP 409.03(a):
‘If an inventor is deceased or legally incapacitated, the legal representative of the inventor may sign the oath or declaration as the inventor.’
The legal representative must provide proof of their authority to act on behalf of the unavailable inventor. This might include:
- Death certificate and letters testamentary for a deceased inventor
- Court order appointing a guardian for a legally incapacitated inventor
It’s important to note that this provision applies only to deceased or legally incapacitated inventors, not to those who are simply unavailable or unwilling to sign.
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No, a copy of the original oath or declaration cannot be used in a continuation or divisional application filed under 37 CFR 1.53(b). A new oath or declaration must be filed.
According to MPEP 602.02: ‘A new oath or declaration in compliance with 37 CFR 1.63 or 1.67 is required in a continuation or divisional application filed under 37 CFR 1.53(b), regardless of whether a copy of the oath or declaration from the prior application is submitted.’
This requirement ensures that the inventors reaffirm their commitment to the claims in the new application, which may differ from those in the parent application.
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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 ยง 1.51(b)(2) and ยง 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.
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