Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 400 – Representative of Applicant or Owner (1)
What happens if an unavailable joint inventor refuses to sign an oath or declaration?
If an unavailable joint inventor refuses to sign an oath or declaration, the applicant may file a petition under 37 CFR 1.183 to waive the requirement for that inventor’s signature. According to MPEP 409.03(a):
‘If a nonsigning inventor refuses to sign the oath or declaration or cannot be reached, the oath or declaration under 37 CFR 1.63 by the remaining joint inventor(s) must state that the nonsigning inventor is either refused to sign or could not be reached after diligent effort to contact him or her.’
The petition should include evidence of the attempts made to contact the unavailable inventor and any responses received. The Office will then determine whether to grant the petition based on the circumstances presented.
To learn more:
Patent Law (4)
Provisional and nonprovisional patent applications have several key differences:
- Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.”
- Oath or Declaration: Nonprovisional applications require an oath or declaration, while provisional applications do not. The MPEP notes, “Furthermore, no oath or declaration is required.”
- Examination: Nonprovisional applications undergo substantive examination, while provisional applications do not.
- Information Disclosure Statement: Provisional applications should not include an information disclosure statement, unlike nonprovisional applications. The MPEP states, “Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement.”
- Cover Sheet: Provisional applications require a specific cover sheet with identifying information, which is not required for nonprovisional applications.
For more details on provisional applications, refer to MPEP § 201.04.
To learn more:
An oath is a sworn statement made before a person authorized to administer oaths, while a declaration is a written statement that can be used in lieu of an oath. According to MPEP 602, “A declaration may be submitted in lieu of an oath in any document filed in the Office provided the declaration complies with the requirements of 37 CFR 1.68.” Declarations are often preferred because they don’t require appearing before an official and are easier to process electronically.
To learn more:
When is a new oath or declaration required for a continuation-in-part application?
For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:
‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’
This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.
To learn more:
What happens if an unavailable joint inventor refuses to sign an oath or declaration?
If an unavailable joint inventor refuses to sign an oath or declaration, the applicant may file a petition under 37 CFR 1.183 to waive the requirement for that inventor’s signature. According to MPEP 409.03(a):
‘If a nonsigning inventor refuses to sign the oath or declaration or cannot be reached, the oath or declaration under 37 CFR 1.63 by the remaining joint inventor(s) must state that the nonsigning inventor is either refused to sign or could not be reached after diligent effort to contact him or her.’
The petition should include evidence of the attempts made to contact the unavailable inventor and any responses received. The Office will then determine whether to grant the petition based on the circumstances presented.
To learn more:
Patent Procedure (4)
Provisional and nonprovisional patent applications have several key differences:
- Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.”
- Oath or Declaration: Nonprovisional applications require an oath or declaration, while provisional applications do not. The MPEP notes, “Furthermore, no oath or declaration is required.”
- Examination: Nonprovisional applications undergo substantive examination, while provisional applications do not.
- Information Disclosure Statement: Provisional applications should not include an information disclosure statement, unlike nonprovisional applications. The MPEP states, “Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement.”
- Cover Sheet: Provisional applications require a specific cover sheet with identifying information, which is not required for nonprovisional applications.
For more details on provisional applications, refer to MPEP § 201.04.
To learn more:
An oath is a sworn statement made before a person authorized to administer oaths, while a declaration is a written statement that can be used in lieu of an oath. According to MPEP 602, “A declaration may be submitted in lieu of an oath in any document filed in the Office provided the declaration complies with the requirements of 37 CFR 1.68.” Declarations are often preferred because they don’t require appearing before an official and are easier to process electronically.
To learn more:
When is a new oath or declaration required for a continuation-in-part application?
For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:
‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’
This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.
To learn more:
What happens if an unavailable joint inventor refuses to sign an oath or declaration?
If an unavailable joint inventor refuses to sign an oath or declaration, the applicant may file a petition under 37 CFR 1.183 to waive the requirement for that inventor’s signature. According to MPEP 409.03(a):
‘If a nonsigning inventor refuses to sign the oath or declaration or cannot be reached, the oath or declaration under 37 CFR 1.63 by the remaining joint inventor(s) must state that the nonsigning inventor is either refused to sign or could not be reached after diligent effort to contact him or her.’
The petition should include evidence of the attempts made to contact the unavailable inventor and any responses received. The Office will then determine whether to grant the petition based on the circumstances presented.
To learn more: