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 105 - Suspended or Excluded Practitioner Cannot Inspect (1)
Yes, there is one exception. A suspended or excluded patent attorney or agent can inspect an application if they are the inventor or applicant of that particular application. The MPEP clarifies:
USPTO employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application unless it is one in which said attorney or agent is an inventor or the applicant.
So while suspended or excluded practitioners generally cannot inspect applications, they can still access ones in which they are directly involved as the inventor or applicant.
MPEP 151 - Content of the Statements (2)
The word “applicant” in the Atomic Energy Act and NASA Act is construed by the USPTO to mean the inventor(s), an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter. In the ordinary situation, the statements must be signed by:
- The inventor or joint inventors
- An assignee
- An obligated assignee
- A person who otherwise shows sufficient proprietary interest in the matter
This is consistent with the fact that these parties would be most knowledgeable of the “full facts concerning the circumstances under which such invention was made” (42 U.S.C. 2457) or “full facts surrounding the making or conception of the invention or discovery” (42 U.S.C. 2182).
The statement regarding work with the Atomic Energy Commission or NASA should be in the form of an oath or declaration. The following is an acceptable format, assuming no government funds or considerations were involved in the invention’s conception or making:
I (We) [Name(s)] citizens of [Country] residing at [Address] declare: That I (we) made and conceived the invention described and claimed in patent application number [Application Number] filed in the United States of America on [Date] titled [Title].
[Include statement regarding employment and/or relevant facts.]
The invention or discovery was not made or conceived in the course of, or in connection with, or under the terms of any contract, subcontract or arrangement entered into with or for the benefit of the United States Atomic Energy Commission or its successors Energy Research and Development Administration or the Department of Energy.
The invention was not made under nor is there any relationship of the invention to the performance of any work under any contract of the National Aeronautics and Space Administration.
The statement must be signed by all the inventors.
MPEP 300 - Ownership and Assignment (1)
According to the MPEP, the 37 CFR 3.73(c) statement establishing assignee ownership can be signed by:
- A person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer)
- Any person, if the statement sets forth that the person is authorized to act on behalf of the assignee
- A patent practitioner of record
- A person empowered by an organizational resolution to sign on behalf of the assignee, if a copy of the resolution is submitted
The MPEP clarifies: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director.”
MPEP 400 - Representative of Applicant or Owner (2)
A pre-AIA 37 CFR 1.47 application is a patent application filed before September 16, 2012, where not all inventors have signed the application. This provision allows for the filing of a patent application when an inventor cannot be reached or refuses to sign.
According to the MPEP, A filing date is assigned to an application deposited pursuant to pre-AIA 37 CFR 1.47 provided the requirements of 37 CFR 1.53(b) are met.
This means that as long as the basic filing requirements are fulfilled, the application can be processed even without all inventors’ signatures.
To learn more:
To learn more:
Yes, a legal representative can sign patent documents on behalf of the inventor under certain circumstances. The MPEP 402.03 states:
Where a power of attorney or authorization of agent is given to a customer number, a practitioner must sign the correspondence if an applicant is to be represented.
This means that if a power of attorney has been granted, the authorized practitioner can sign documents on behalf of the inventor. However, it’s important to note that certain documents, such as the inventor’s oath or declaration, must still be signed by the inventor personally unless specific conditions are met (e.g., the inventor is deceased, legally incapacitated, or cannot be found after diligent effort).
To learn more:
Patent Law (9)
The word “applicant” in the Atomic Energy Act and NASA Act is construed by the USPTO to mean the inventor(s), an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter. In the ordinary situation, the statements must be signed by:
- The inventor or joint inventors
- An assignee
- An obligated assignee
- A person who otherwise shows sufficient proprietary interest in the matter
This is consistent with the fact that these parties would be most knowledgeable of the “full facts concerning the circumstances under which such invention was made” (42 U.S.C. 2457) or “full facts surrounding the making or conception of the invention or discovery” (42 U.S.C. 2182).
According to the MPEP, the 37 CFR 3.73(c) statement establishing assignee ownership can be signed by:
- A person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer)
- Any person, if the statement sets forth that the person is authorized to act on behalf of the assignee
- A patent practitioner of record
- A person empowered by an organizational resolution to sign on behalf of the assignee, if a copy of the resolution is submitted
The MPEP clarifies: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director.”
The statement regarding work with the Atomic Energy Commission or NASA should be in the form of an oath or declaration. The following is an acceptable format, assuming no government funds or considerations were involved in the invention’s conception or making:
I (We) [Name(s)] citizens of [Country] residing at [Address] declare: That I (we) made and conceived the invention described and claimed in patent application number [Application Number] filed in the United States of America on [Date] titled [Title].
[Include statement regarding employment and/or relevant facts.]
The invention or discovery was not made or conceived in the course of, or in connection with, or under the terms of any contract, subcontract or arrangement entered into with or for the benefit of the United States Atomic Energy Commission or its successors Energy Research and Development Administration or the Department of Energy.
The invention was not made under nor is there any relationship of the invention to the performance of any work under any contract of the National Aeronautics and Space Administration.
The statement must be signed by all the inventors.
A pre-AIA 37 CFR 1.47 application is a patent application filed before September 16, 2012, where not all inventors have signed the application. This provision allows for the filing of a patent application when an inventor cannot be reached or refuses to sign.
According to the MPEP, A filing date is assigned to an application deposited pursuant to pre-AIA 37 CFR 1.47 provided the requirements of 37 CFR 1.53(b) are met.
This means that as long as the basic filing requirements are fulfilled, the application can be processed even without all inventors’ signatures.
To learn more:
To learn more:
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 § 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.“
To learn more:
Inventor signatures on patent applications must meet specific requirements to be considered valid:
- The signature must be handwritten or an S-signature.
- The name in the signature must match the name on the application.
- For inventors with multiple surnames or given names, all names should be included in the signature.
The MPEP 602.08(b) states:
The signature of the inventor may be handwritten or an S-signature. See MPEP § 502.02, subsection II, and 37 CFR 1.4(d)(2). The name of each inventor should be printed or typed under the signature.
Additionally, for inventors with multiple names:
If the inventor has many given names, the Office will accept a signature including at least one given name and the family name.
Ensuring correct signatures is crucial for the validity of the patent application and to avoid potential issues during examination or enforcement.
To learn more:
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.
To learn more:
Yes, a legal representative can sign patent documents on behalf of the inventor under certain circumstances. The MPEP 402.03 states:
Where a power of attorney or authorization of agent is given to a customer number, a practitioner must sign the correspondence if an applicant is to be represented.
This means that if a power of attorney has been granted, the authorized practitioner can sign documents on behalf of the inventor. However, it’s important to note that certain documents, such as the inventor’s oath or declaration, must still be signed by the inventor personally unless specific conditions are met (e.g., the inventor is deceased, legally incapacitated, or cannot be found after diligent effort).
To learn more:
Yes, there is one exception. A suspended or excluded patent attorney or agent can inspect an application if they are the inventor or applicant of that particular application. The MPEP clarifies:
USPTO employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application unless it is one in which said attorney or agent is an inventor or the applicant.
So while suspended or excluded practitioners generally cannot inspect applications, they can still access ones in which they are directly involved as the inventor or applicant.
Patent Procedure (6)
According to the MPEP, the 37 CFR 3.73(c) statement establishing assignee ownership can be signed by:
- A person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer)
- Any person, if the statement sets forth that the person is authorized to act on behalf of the assignee
- A patent practitioner of record
- A person empowered by an organizational resolution to sign on behalf of the assignee, if a copy of the resolution is submitted
The MPEP clarifies: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director.”
A pre-AIA 37 CFR 1.47 application is a patent application filed before September 16, 2012, where not all inventors have signed the application. This provision allows for the filing of a patent application when an inventor cannot be reached or refuses to sign.
According to the MPEP, A filing date is assigned to an application deposited pursuant to pre-AIA 37 CFR 1.47 provided the requirements of 37 CFR 1.53(b) are met.
This means that as long as the basic filing requirements are fulfilled, the application can be processed even without all inventors’ signatures.
To learn more:
To learn more:
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 § 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.“
To learn more:
Inventor signatures on patent applications must meet specific requirements to be considered valid:
- The signature must be handwritten or an S-signature.
- The name in the signature must match the name on the application.
- For inventors with multiple surnames or given names, all names should be included in the signature.
The MPEP 602.08(b) states:
The signature of the inventor may be handwritten or an S-signature. See MPEP § 502.02, subsection II, and 37 CFR 1.4(d)(2). The name of each inventor should be printed or typed under the signature.
Additionally, for inventors with multiple names:
If the inventor has many given names, the Office will accept a signature including at least one given name and the family name.
Ensuring correct signatures is crucial for the validity of the patent application and to avoid potential issues during examination or enforcement.
To learn more:
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.
To learn more:
Yes, a legal representative can sign patent documents on behalf of the inventor under certain circumstances. The MPEP 402.03 states:
Where a power of attorney or authorization of agent is given to a customer number, a practitioner must sign the correspondence if an applicant is to be represented.
This means that if a power of attorney has been granted, the authorized practitioner can sign documents on behalf of the inventor. However, it’s important to note that certain documents, such as the inventor’s oath or declaration, must still be signed by the inventor personally unless specific conditions are met (e.g., the inventor is deceased, legally incapacitated, or cannot be found after diligent effort).
To learn more: