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Monday Jan 07, 2013

From Janet Gongola, Patent Reform Coordinator: Tips for Using a Substitute Statement, Correcting Inventorship, Changing/Updating Inventor Names or Their Order, and Filing USPTO Inventor’s Oath or Declaration Forms

 

The inventor’s oath or declaration provision, which became effective on September 16, 2012, streamlined many aspects of filing an inventor’s oath or declaration.  In an earlier post from November 2012, we discussed the simplified content required to be included in an inventor's oath or declaration and delayed submission of an inventor’s oath or declaration, among other topics.  Here, we offer additional guidance regarding the use of a substitute statement, which can be filed in lieu of an oath or declaration.  Additionally, we address the process for correcting inventorship and changing/updating inventor names or the order of the names of joint inventors.  Lastly, we provide instructions for completing select USPTO inventor oath or declaration forms as well as five example fact patterns with an explanation of how to determine what inventor’s oath or declaration related documents must be filed with the USPTO for each.

Use of a Substitute Statement 

Section 4(a) of the AIA amends 35 U.S.C. § 115 to allow a non-inventor applicant to file a substitute statement in place of an inventor’s oath or declaration under permitted circumstances in applications filed on or after September 16, 2012.  The permitted circumstances include where an inventor is deceased, legally incapacitated, cannot be located after diligent effort, or refuses to sign an oath or declaration.  A non-inventor applicant who may file a substitute statement includes: (i) the legal representative (e.g., executor, administrator, heirs) of a deceased or legally incapacitated inventor pursuant to 37 C.F.R. § 1.43; (ii) a joint inventor(s) under 37 C.F.R. § 1.45 on behalf of an inventor who refuses to join in a patent application or cannot be found or reached after diligent effort under 37 C.F.R. § 1.45; (iii) an assignee or obligated assignee under 37 C.F.R. § 1.46; or (iv) a person who otherwise shows sufficient proprietary interest in the matter after the USPTO grants an applicant’s petition under 37 C.F.R. § 1.46. 

The table below summarizes the requirements that a non-inventor applicant must satisfy for a substitute statement:

Requirements for a Substitute Statement

Content

Demonstrate compliance with oath or declaration requirements in
37 CFR 1.63(a) per 37 CFR 1.64(b)(1)

  • Identify the inventor or joint inventor;
  • Identify the application;
  • Contain a statement relating to the inventor being an original inventor; and
  • Contain a statement that the application was made or authorized to be made by the person executing the substitute statement.

Identify who is executing the substitute statement per
37 CFR 1.64(b)(2)

  • Identify the person executing the substitute statement;
  • Identify the relationship (e.g., assignee) that the executing person has with the inventor or joint inventor; and
  • Provide the residence and mailing address (where mail is customarily received) of the person signing the substitute statement UNLESS such information is supplied in an Application Data Sheet (ADS) complying with 37 CFR 1.76.

Identify why the executing person may submit a substitute statement per 37 CFR 1.64(b)(3)

Identify the permitted circumstances under which the executing person is filing the substitute statement (i.e., whether the inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration)

Identify information about each inventor per 37 CFR 1.64(b)(4)

  • Supply an ADS complying with 37 CFR 1.76;

    - OR-
  • Identify each inventor by their legal name; and
  • For each inventor who is not deceased or under a legal incapacity, identify the last known mailing address where the inventor customarily receives mail, and the last known residence, if an inventor lives at a location which is different from where the inventor customarily receives mail.

Acknowledge penalties and punishment per 37 CFR 1.64(e)

Contain an acknowledgement that any willful false statement made in a substitute statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.

 

Notably, there is certain information that a non-inventor applicant need not include with a substitute statement.  First, a non-inventor applicant need not submit proof of the permitted circumstance to file a substitute statement (e.g., inventor’s death certificate to establish that a named inventor is deceased).  Additionally, a non-inventor applicant is not required to state in the substitute statement that he/she has reviewed and understands the contents of the application, including the claims.  Nevertheless, the non-inventor applicant should indicate review and understanding given that he/she is under a duty to disclose to the USPTO all known information that is material to the patentability of the claimed invention as defined in 37 C.F.R. 1.56. 

Finally, a non-inventor applicant may postpone filing a substitute statement until the application is otherwise in condition for allowance (except for reissue applications).  

Process for Correcting Inventorship and Changing/Updating an Inventor’s Name or the Order of Joint Inventors’ Names 

The USPTO rules enable an applicant to correct inventorship where an application or patent sets forth improper inventorship and where the prosecution of an application results in the need to add or delete one or more inventors, for instance, due to the addition or deletion of claims or an amendment to the claims.  The USPTO rules likewise permit an applicant to change or update a particular inventor’s name if his/her legal name has changed (e.g., due to marriage), or an inventor’s name contains an error (e.g., typographical or transliteration mistake or the reversal of family or given names).  Finally, the USPTO rules allow an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent).  An applicant may effect a correction of inventorship or change/update to an inventor’s name or the order of joint inventors’ names regardless of the filing date of the application.

The table below details the requirements to make a correction of inventorship or change/update an inventor’s name or the order of joint inventors’ names:

Document type

Type of Correction or Change

 

Required Documents for Submission to USPTO

Applicable Fee

Non-provisional patent application

 

Adding or deleting inventor(s)

 

  • A request under 37 CFR 1.48(a) to correct or change the inventorship;
  • A signed ADS including inventor information for all actual inventors as required by 37 CFR 1.76(b)(1); and
  • An executed inventor’s oath/declaration under 37 CFR 1.63 for any added inventors (37 CFR 1.48(b)).

Note:  For applications filed prior to 9/16/12, where a 37 CFR 1.48(a) request is filed after 9/16/12, the inventor’s oath/declaration must be compliant with the prior version of 37 CFR 1.63, including the requirement to identify the entire inventive entity.  However, only the added inventor needs to execute the oath/declaration identifying the entire inventive entity. 

$130 per
37 CFR  1.17(i)

 

Correcting or updating the name of any inventor

 

 

  • A request under 37 CFR 1.48(f) to correct or update the name of an inventor; and
  • A signed ADS including the corrected or updated inventor information as required by 37 CFR 1.76(b)(1).

Changing the order of the names of joint inventor

  • A request under 37 CFR 1.48(f) to change the order of names of joint inventors; and
  • A signed ADS including the new desired order of inventors as required by 37 CFR 1.76(b)(1).

Provisional patent application

Adding or deleting inventor(s)

 

AND

 

Correcting or updating the name of any inventor

 

Note: The change in order of the names of inventors in a provisional application is not provided for since provisional applications do not become application publications or patents.

A request under 37 CFR 1.48(d) to correct the inventorship, or to correct or update the name of an inventor, that identifies each inventor by their legal name.

Note: The request must be signed by either:

(i) a patent practitioner who is of record or acting in a representative capacity; or

(ii) the applicant (where the applicant is a juristic entity, the request must be signed by a patent practitioner).

 

Also note: An ADS is not required.

$50 per
37 CFR  1.17(q)

Patent

Correcting inventorship

  • A request to correct inventorship under 37 CFR 1.324;
  • A statement from each person being added as an inventor AND each person currently named an inventor  – each statement either (i) agreeing to the change of inventorship; or (ii) stating that the person has no disagreement regarding the requested change; and
  • A statement from all assignees (of persons who are submitting a statement of agreement) agreeing to the change of inventorship in the patent – each assignee statement complying with 37 CFR  3.73(c).

Note: 35 U.S.C. 256 does not permit waiver of any of these requirements.  Where compliance is not possible, any correction of inventorship would need to be done via a reissue application or through court order.

Also note:  For applications filed before 9/16/12, the prior version of 37 CFR 3.73(b) applies.

$130 per
37 CFR  1.20(b)

Instructions Available for USPTO Inventor Oath or Declaration Forms

The USPTO developed a series of inventor oath or declaration forms that may be used by inventors to fulfill the inventor’s oath or declaration requirement of the AIA; the agency previously released these forms in September 2012.  The forms are located at www.uspto.gov/forms.  We recently added instructions for how to complete the most commonly used inventor’s oath or declaration forms.  For example, instructions are available for Form AIA/01, which is a declaration for a utility or design application when an application data sheet is filed in the application, and Form AIA/02, which is a substitute statement filed in lieu of an inventor’s oath or declaration for a utility or design application.  We encourage you to consult these instructions for questions about the content of the forms.

Inventor’s Oath or Declaration Examples

The Office is providing four examples to aid applicants in determining which inventor’s oath or declaration forms must be submitted to the agency for an application filed on or after September 16, 2012.  Each example sets forth a hypothetical fact pattern followed by the Office’s recommendation of the inventor’s oath or declaration and other related forms to be filed and those forms properly completed.  The examples are intended to be illustrative of commonly encountered fact patterns.   

>> Download Inventor’s Oath or Declaration Examples [PDF – 8.8 MB]

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