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 200 - Types and Status of Application; Benefit and Priority (5)
The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:
- For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1):
For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
- For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP:
For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.
Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.
A nonprovisional patent application filed under 35 U.S.C. 111(a) must include several key components. According to the MPEP, these include:
- A specification as prescribed by 35 U.S.C. 112
- A drawing as prescribed by 35 U.S.C. 113 (if necessary)
- An oath or declaration as prescribed by 35 U.S.C. 115
- The application filing fee
The MPEP states: Such application shall include— (A) a specification as prescribed by section 112; (B) a drawing as prescribed by section 113; and (C) an oath or declaration as prescribed by section 115.
It’s important to note that while claims and drawings are not required for obtaining a filing date (except for design applications), they are necessary for a complete application and must be submitted to avoid abandonment.
For more information on filing requirements, visit: filing requirements.
For more information on nonprovisional applications, visit: nonprovisional applications.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent drawings, visit: patent drawings.
How does the oath or declaration requirement differ for divisional applications?
For divisional applications, the oath or declaration requirement can be simplified under certain conditions. According to MPEP 201.06(c):
“The divisional application may be filed under 37 CFR 1.53(b) using all or part of a copy of the oath or declaration filed in the prior nonprovisional application under 37 CFR 1.63(d), as long as the oath or declaration is still applicable to the subject matter of the divisional application.”
This means that if the original oath or declaration from the parent application still covers the subject matter in the divisional application, it can be reused. However, if new matter is introduced or the inventors change, a new oath or declaration may be required.
For more information on Divisional application, visit: Divisional application.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent filing, visit: patent filing.
The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:
- For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
- For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.
The MPEP states:
For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.
This change reflects the America Invents Act’s modifications to U.S. patent law.
For more information on America Invents Act, visit: America Invents Act.
For more information on continuation application, visit: continuation application.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent application requirements, visit: patent application requirements.
37 CFR 1.63(d) provides a simplified process for submitting an oath or declaration in a divisional application. The MPEP states:
’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 a signed oath or declaration.’
This means that if the divisional application is filed by the same inventor(s) as the parent application, and there’s no new matter added, the oath or declaration from the parent application can be used for the divisional application. This simplifies the filing process and reduces paperwork.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on oath or declaration, visit: oath or declaration.
MPEP 201 - Types of Applications (4)
A nonprovisional patent application filed under 35 U.S.C. 111(a) must include several key components. According to the MPEP, these include:
- A specification as prescribed by 35 U.S.C. 112
- A drawing as prescribed by 35 U.S.C. 113 (if necessary)
- An oath or declaration as prescribed by 35 U.S.C. 115
- The application filing fee
The MPEP states: Such application shall include— (A) a specification as prescribed by section 112; (B) a drawing as prescribed by section 113; and (C) an oath or declaration as prescribed by section 115.
It’s important to note that while claims and drawings are not required for obtaining a filing date (except for design applications), they are necessary for a complete application and must be submitted to avoid abandonment.
For more information on filing requirements, visit: filing requirements.
For more information on nonprovisional applications, visit: nonprovisional applications.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent drawings, visit: patent drawings.
How does the oath or declaration requirement differ for divisional applications?
For divisional applications, the oath or declaration requirement can be simplified under certain conditions. According to MPEP 201.06(c):
“The divisional application may be filed under 37 CFR 1.53(b) using all or part of a copy of the oath or declaration filed in the prior nonprovisional application under 37 CFR 1.63(d), as long as the oath or declaration is still applicable to the subject matter of the divisional application.”
This means that if the original oath or declaration from the parent application still covers the subject matter in the divisional application, it can be reused. However, if new matter is introduced or the inventors change, a new oath or declaration may be required.
For more information on Divisional application, visit: Divisional application.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent filing, visit: patent filing.
The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:
- For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
- For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.
The MPEP states:
For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.
This change reflects the America Invents Act’s modifications to U.S. patent law.
For more information on America Invents Act, visit: America Invents Act.
For more information on continuation application, visit: continuation application.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent application requirements, visit: patent application requirements.
37 CFR 1.63(d) provides a simplified process for submitting an oath or declaration in a divisional application. The MPEP states:
’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 a signed oath or declaration.’
This means that if the divisional application is filed by the same inventor(s) as the parent application, and there’s no new matter added, the oath or declaration from the parent application can be used for the divisional application. This simplifies the filing process and reduces paperwork.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on oath or declaration, visit: oath or declaration.
MPEP 214-Formal Requirements of Claim for Foreign Priority (1)
The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:
- For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1):
For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
- For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP:
For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.
Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.
MPEP 300 - Ownership and Assignment (2)
An ‘assignment-statement’ is a relatively new concept in patent law, introduced for applications filed on or after September 16, 2012. The MPEP explains:
‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’
This means that for qualifying applications, the assignment document can serve a dual purpose:
- Transferring ownership of the patent application
- Fulfilling the requirement for an oath or declaration
This provision can simplify the application process by combining two previously separate documents. The MPEP cites 35 U.S.C. 115(e), 37 CFR 1.63(e), and MPEP §§ 302.07, 317, and 602.01(a) for further details on this practice.
Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states:
‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’
This provision allows for greater flexibility in meeting the oath or declaration requirements, particularly for assigned inventions. However, it’s important to ensure that the assignment contains all the necessary statements and is properly recorded with the USPTO.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent assignment, visit: patent assignment.
MPEP 301-Ownership/Assignability of Patents and Applications (2)
An ‘assignment-statement’ is a relatively new concept in patent law, introduced for applications filed on or after September 16, 2012. The MPEP explains:
‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’
This means that for qualifying applications, the assignment document can serve a dual purpose:
- Transferring ownership of the patent application
- Fulfilling the requirement for an oath or declaration
This provision can simplify the application process by combining two previously separate documents. The MPEP cites 35 U.S.C. 115(e), 37 CFR 1.63(e), and MPEP §§ 302.07, 317, and 602.01(a) for further details on this practice.
Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states:
‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’
This provision allows for greater flexibility in meeting the oath or declaration requirements, particularly for assigned inventions. However, it’s important to ensure that the assignment contains all the necessary statements and is properly recorded with the USPTO.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent assignment, visit: patent assignment.
MPEP 400 - Representative of Applicant or Owner (3)
If a previously non-signing inventor decides to join a pre-AIA 37 CFR 1.47 application, they can do so by filing the appropriate documentation. The MPEP states:
“In the event the previously nonsigning inventor decides to join in the application by filing an executed oath or declaration complying with pre-AIA 37 CFR 1.63, the oath or declaration will be placed in the application file.”
This means that if the inventor who initially did not sign the application later chooses to participate, they can submit a properly executed oath or declaration. This document will then be added to the official application file, effectively joining them to the application.
To learn more:
To learn more:
Yes, a Pre-AIA 37 CFR 1.47 application can be converted to a regular application if the previously non-signing inventor later submits an executed oath or declaration. The MPEP 409.03(j) states:
‘If a 37 CFR 1.47 applicant submits an executed oath or declaration of the nonsigning inventor, the executed oath or declaration should be accepted by the Office and the application no longer treated under 37 CFR 1.47.’
This means that once the missing oath or declaration is submitted, the application will be processed as a regular application, removing the special 37 CFR 1.47 status.
To learn more:
To learn more:
A nonsigning inventor who subsequently joins an application cannot revoke or grant a power of attorney in certain situations. MPEP 402.05(a) explains:
37 CFR 1.64(f) provides that the submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under 37 CFR 1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.
This means that if a nonsigning inventor later submits an oath or declaration in an application filed under specific circumstances (such as joint inventors, deceased or legally incapacitated inventors, or assignee filing), they cannot use this submission to revoke an existing power of attorney or grant a new one.
To learn more:
MPEP 500 - Receipt and Handling of Mail and Papers (1)
When an application is filed with missing parts, the USPTO follows these procedures:
- If the application meets minimum requirements for a filing date, it will be assigned one.
- A Notice to File Missing Parts will be issued, detailing the missing items.
- Applicants must submit missing items along with any required surcharges within the specified time period.
- For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
- For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.
The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)
MPEP 503 - Application Number and Filing Receipt (1)
When an application is filed with missing parts, the USPTO follows these procedures:
- If the application meets minimum requirements for a filing date, it will be assigned one.
- A Notice to File Missing Parts will be issued, detailing the missing items.
- Applicants must submit missing items along with any required surcharges within the specified time period.
- For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
- For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.
The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)
Patent Law (13)
The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:
- For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1):
For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
- For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP:
For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.
Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.
An ‘assignment-statement’ is a relatively new concept in patent law, introduced for applications filed on or after September 16, 2012. The MPEP explains:
‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’
This means that for qualifying applications, the assignment document can serve a dual purpose:
- Transferring ownership of the patent application
- Fulfilling the requirement for an oath or declaration
This provision can simplify the application process by combining two previously separate documents. The MPEP cites 35 U.S.C. 115(e), 37 CFR 1.63(e), and MPEP §§ 302.07, 317, and 602.01(a) for further details on this practice.
What information is required for inventor’s citizenship in a patent application?
For patent applications, the inventor’s citizenship must be provided. According to MPEP 602.08(b), ‘The inventor’s citizenship must be specifically identified in the oath or declaration.’ This requirement applies to both utility and design patent applications. The MPEP further states:
‘It is not sufficient for oath or declaration to merely state that the inventor is a citizen of the ‘United States,’ but the particular state of which the inventor is a citizen must be specified.’
This means that for U.S. citizens, the specific state of citizenship should be mentioned. For non-U.S. citizens, the country of citizenship should be clearly stated.
To learn more:
If a previously non-signing inventor decides to join a pre-AIA 37 CFR 1.47 application, they can do so by filing the appropriate documentation. The MPEP states:
“In the event the previously nonsigning inventor decides to join in the application by filing an executed oath or declaration complying with pre-AIA 37 CFR 1.63, the oath or declaration will be placed in the application file.”
This means that if the inventor who initially did not sign the application later chooses to participate, they can submit a properly executed oath or declaration. This document will then be added to the official application file, effectively joining them to the application.
To learn more:
To learn more:
A nonprovisional patent application filed under 35 U.S.C. 111(a) must include several key components. According to the MPEP, these include:
- A specification as prescribed by 35 U.S.C. 112
- A drawing as prescribed by 35 U.S.C. 113 (if necessary)
- An oath or declaration as prescribed by 35 U.S.C. 115
- The application filing fee
The MPEP states: Such application shall include— (A) a specification as prescribed by section 112; (B) a drawing as prescribed by section 113; and (C) an oath or declaration as prescribed by section 115.
It’s important to note that while claims and drawings are not required for obtaining a filing date (except for design applications), they are necessary for a complete application and must be submitted to avoid abandonment.
For more information on filing requirements, visit: filing requirements.
For more information on nonprovisional applications, visit: nonprovisional applications.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent drawings, visit: patent drawings.
When an application is filed with missing parts, the USPTO follows these procedures:
- If the application meets minimum requirements for a filing date, it will be assigned one.
- A Notice to File Missing Parts will be issued, detailing the missing items.
- Applicants must submit missing items along with any required surcharges within the specified time period.
- For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
- For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.
The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)
How does the oath or declaration requirement differ for divisional applications?
For divisional applications, the oath or declaration requirement can be simplified under certain conditions. According to MPEP 201.06(c):
“The divisional application may be filed under 37 CFR 1.53(b) using all or part of a copy of the oath or declaration filed in the prior nonprovisional application under 37 CFR 1.63(d), as long as the oath or declaration is still applicable to the subject matter of the divisional application.”
This means that if the original oath or declaration from the parent application still covers the subject matter in the divisional application, it can be reused. However, if new matter is introduced or the inventors change, a new oath or declaration may be required.
For more information on Divisional application, visit: Divisional application.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent filing, visit: patent filing.
The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:
- For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
- For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.
The MPEP states:
For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.
This change reflects the America Invents Act’s modifications to U.S. patent law.
For more information on America Invents Act, visit: America Invents Act.
For more information on continuation application, visit: continuation application.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent application requirements, visit: patent application requirements.
Provisional and nonprovisional applications have different content requirements. According to MPEP 601:
- Provisional applications do not require claims or an oath or declaration.
- Nonprovisional applications must include at least one claim and an oath or declaration.
The MPEP states: ‘A provisional application must also include the cover sheet required by 37 CFR 1.51(c)(1), which may be an application data sheet (37 CFR 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as a nonprovisional application filed under 37 CFR 1.53(b).’
It’s crucial to understand these differences to ensure proper filing and to avoid unintended treatment of your application.
To learn more:
37 CFR 1.63(d) provides a simplified process for submitting an oath or declaration in a divisional application. The MPEP states:
’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 a signed oath or declaration.’
This means that if the divisional application is filed by the same inventor(s) as the parent application, and there’s no new matter added, the oath or declaration from the parent application can be used for the divisional application. This simplifies the filing process and reduces paperwork.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on oath or declaration, visit: oath or declaration.
Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states:
‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’
This provision allows for greater flexibility in meeting the oath or declaration requirements, particularly for assigned inventions. However, it’s important to ensure that the assignment contains all the necessary statements and is properly recorded with the USPTO.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent assignment, visit: patent assignment.
Yes, a Pre-AIA 37 CFR 1.47 application can be converted to a regular application if the previously non-signing inventor later submits an executed oath or declaration. The MPEP 409.03(j) states:
‘If a 37 CFR 1.47 applicant submits an executed oath or declaration of the nonsigning inventor, the executed oath or declaration should be accepted by the Office and the application no longer treated under 37 CFR 1.47.’
This means that once the missing oath or declaration is submitted, the application will be processed as a regular application, removing the special 37 CFR 1.47 status.
To learn more:
To learn more:
A nonsigning inventor who subsequently joins an application cannot revoke or grant a power of attorney in certain situations. MPEP 402.05(a) explains:
37 CFR 1.64(f) provides that the submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under 37 CFR 1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.
This means that if a nonsigning inventor later submits an oath or declaration in an application filed under specific circumstances (such as joint inventors, deceased or legally incapacitated inventors, or assignee filing), they cannot use this submission to revoke an existing power of attorney or grant a new one.
To learn more:
Patent Procedure (13)
The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:
- For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1):
For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
- For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP:
For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.
Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.
An ‘assignment-statement’ is a relatively new concept in patent law, introduced for applications filed on or after September 16, 2012. The MPEP explains:
‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’
This means that for qualifying applications, the assignment document can serve a dual purpose:
- Transferring ownership of the patent application
- Fulfilling the requirement for an oath or declaration
This provision can simplify the application process by combining two previously separate documents. The MPEP cites 35 U.S.C. 115(e), 37 CFR 1.63(e), and MPEP §§ 302.07, 317, and 602.01(a) for further details on this practice.
What information is required for inventor’s citizenship in a patent application?
For patent applications, the inventor’s citizenship must be provided. According to MPEP 602.08(b), ‘The inventor’s citizenship must be specifically identified in the oath or declaration.’ This requirement applies to both utility and design patent applications. The MPEP further states:
‘It is not sufficient for oath or declaration to merely state that the inventor is a citizen of the ‘United States,’ but the particular state of which the inventor is a citizen must be specified.’
This means that for U.S. citizens, the specific state of citizenship should be mentioned. For non-U.S. citizens, the country of citizenship should be clearly stated.
To learn more:
If a previously non-signing inventor decides to join a pre-AIA 37 CFR 1.47 application, they can do so by filing the appropriate documentation. The MPEP states:
“In the event the previously nonsigning inventor decides to join in the application by filing an executed oath or declaration complying with pre-AIA 37 CFR 1.63, the oath or declaration will be placed in the application file.”
This means that if the inventor who initially did not sign the application later chooses to participate, they can submit a properly executed oath or declaration. This document will then be added to the official application file, effectively joining them to the application.
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A nonprovisional patent application filed under 35 U.S.C. 111(a) must include several key components. According to the MPEP, these include:
- A specification as prescribed by 35 U.S.C. 112
- A drawing as prescribed by 35 U.S.C. 113 (if necessary)
- An oath or declaration as prescribed by 35 U.S.C. 115
- The application filing fee
The MPEP states: Such application shall include— (A) a specification as prescribed by section 112; (B) a drawing as prescribed by section 113; and (C) an oath or declaration as prescribed by section 115.
It’s important to note that while claims and drawings are not required for obtaining a filing date (except for design applications), they are necessary for a complete application and must be submitted to avoid abandonment.
For more information on filing requirements, visit: filing requirements.
For more information on nonprovisional applications, visit: nonprovisional applications.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent drawings, visit: patent drawings.
When an application is filed with missing parts, the USPTO follows these procedures:
- If the application meets minimum requirements for a filing date, it will be assigned one.
- A Notice to File Missing Parts will be issued, detailing the missing items.
- Applicants must submit missing items along with any required surcharges within the specified time period.
- For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
- For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.
The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)
How does the oath or declaration requirement differ for divisional applications?
For divisional applications, the oath or declaration requirement can be simplified under certain conditions. According to MPEP 201.06(c):
“The divisional application may be filed under 37 CFR 1.53(b) using all or part of a copy of the oath or declaration filed in the prior nonprovisional application under 37 CFR 1.63(d), as long as the oath or declaration is still applicable to the subject matter of the divisional application.”
This means that if the original oath or declaration from the parent application still covers the subject matter in the divisional application, it can be reused. However, if new matter is introduced or the inventors change, a new oath or declaration may be required.
For more information on Divisional application, visit: Divisional application.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent filing, visit: patent filing.
The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:
- For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
- For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.
The MPEP states:
For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.
This change reflects the America Invents Act’s modifications to U.S. patent law.
For more information on America Invents Act, visit: America Invents Act.
For more information on continuation application, visit: continuation application.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent application requirements, visit: patent application requirements.
Provisional and nonprovisional applications have different content requirements. According to MPEP 601:
- Provisional applications do not require claims or an oath or declaration.
- Nonprovisional applications must include at least one claim and an oath or declaration.
The MPEP states: ‘A provisional application must also include the cover sheet required by 37 CFR 1.51(c)(1), which may be an application data sheet (37 CFR 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as a nonprovisional application filed under 37 CFR 1.53(b).’
It’s crucial to understand these differences to ensure proper filing and to avoid unintended treatment of your application.
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37 CFR 1.63(d) provides a simplified process for submitting an oath or declaration in a divisional application. The MPEP states:
’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 a signed oath or declaration.’
This means that if the divisional application is filed by the same inventor(s) as the parent application, and there’s no new matter added, the oath or declaration from the parent application can be used for the divisional application. This simplifies the filing process and reduces paperwork.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on oath or declaration, visit: oath or declaration.
Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states:
‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’
This provision allows for greater flexibility in meeting the oath or declaration requirements, particularly for assigned inventions. However, it’s important to ensure that the assignment contains all the necessary statements and is properly recorded with the USPTO.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent assignment, visit: patent assignment.
Yes, a Pre-AIA 37 CFR 1.47 application can be converted to a regular application if the previously non-signing inventor later submits an executed oath or declaration. The MPEP 409.03(j) states:
‘If a 37 CFR 1.47 applicant submits an executed oath or declaration of the nonsigning inventor, the executed oath or declaration should be accepted by the Office and the application no longer treated under 37 CFR 1.47.’
This means that once the missing oath or declaration is submitted, the application will be processed as a regular application, removing the special 37 CFR 1.47 status.
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A nonsigning inventor who subsequently joins an application cannot revoke or grant a power of attorney in certain situations. MPEP 402.05(a) explains:
37 CFR 1.64(f) provides that the submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under 37 CFR 1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.
This means that if a nonsigning inventor later submits an oath or declaration in an application filed under specific circumstances (such as joint inventors, deceased or legally incapacitated inventors, or assignee filing), they cannot use this submission to revoke an existing power of attorney or grant a new one.
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