Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Patent Law (2)
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.
Yes, an assignment can serve as an inventor’s oath or declaration under certain conditions. According to 37 CFR 1.63(e):
An assignment may also serve as an oath or declaration required by this section if the assignment as executed: (i) Includes the information and statements required under paragraphs (a) and (b) of this section; and (ii) A copy of the assignment is recorded as provided for in part 3 of this chapter.
This provision implements 35 U.S.C. 115(e). To use an assignment as an oath or declaration:
- The assignment must include all required information and statements of a standard oath or declaration
- It must be executed by the inventor who is under the obligation of assignment
- A copy of the assignment must be recorded with the USPTO
Applicants should use a check-box on the assignment cover sheet to indicate the dual purpose of the document.
Patent Procedure (2)
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.
Yes, an assignment can serve as an inventor’s oath or declaration under certain conditions. According to 37 CFR 1.63(e):
An assignment may also serve as an oath or declaration required by this section if the assignment as executed: (i) Includes the information and statements required under paragraphs (a) and (b) of this section; and (ii) A copy of the assignment is recorded as provided for in part 3 of this chapter.
This provision implements 35 U.S.C. 115(e). To use an assignment as an oath or declaration:
- The assignment must include all required information and statements of a standard oath or declaration
- It must be executed by the inventor who is under the obligation of assignment
- A copy of the assignment must be recorded with the USPTO
Applicants should use a check-box on the assignment cover sheet to indicate the dual purpose of the document.