How does the inventorship in a continuing application relate to the prior application?
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…
Read MoreWhat is the proper format for the Atomic Energy Act and NASA Act statements?
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…
Read MoreCan a patent application be filed without an oath or declaration?
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…
Read MoreWhat information must be included in the oath or declaration regarding foreign applications?
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…
Read MoreHow should I handle changes in inventorship in a continuing application?
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…
Read MoreHow does the oath or declaration work in divisional applications?
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…
Read MoreHow does an ADS affect the oath or declaration in pre-September 16, 2012 applications?
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…
Read MoreHow were changes in inventorship handled in continuation or divisional applications filed under 37 CFR 1.53(b)?
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…
Read MoreWhat happens if an unavailable joint inventor refuses to sign an oath or declaration?
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…
Read MoreHow can joint inventors execute oaths or declarations for applications filed on or after September 16, 2012?
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…
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