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Tuesday Nov 13, 2012

Tips for Navigating the Inventor’s Oath or Declaration Provision

From Janet Gongola, Patent Reform Coordinator:

Beginning on September 16, 2012, the inventor's oath or declaration provision became effective.  This provision simplifies several of the requirements for filing an inventor’s oath or declaration.  We have summarized the changes relating to the content required to be included in an inventor's oath or declaration, the situations when an AIA-compliant inventor's oath or declaration is required, the use of an Application Data Sheet (ADS), delayed submission of an inventor’s oath or declaration, and the process for taking advantage of a combination assignment-statement document.  Stayed tune for more guidance regarding other aspects of the inventor's oath or declaration provision in the coming weeks concerning the use of various USPTO forms for the inventor’s oath or declaration provision, correction of inventorship, and substitute statements.

Content for an AIA Compliant Inventor's Oath or Declaration

Section 115 of Title 35, as amended by the AIA, coupled with new USPTO rules, requires an applicant to provide less information in an inventor's oath or declaration than required by pre-AIA law.  Specifically, the AIA eliminated the need for identification of the inventor’s country citizenship and a statement that the inventor is the first inventor. The list below identifies the current requirements for an inventor's oath or declaration based on the AIA:

  •  Inventor’s name (in the case of joint inventorship, each inventor may sign his/her own oath or declaration provided that an ADS is filed with the application naming the complete inventive entity), residence, and mailing address;
  • Identification of the relevant application to which the oath or declaration relates;
  • Statement that the application was made or was authorized to be made by the declarant;
  • Statement that such individual believes himself/herself to be an original inventor/joint inventor of a claimed invention in the application; and
  • An acknowledgement of penalties that any willful false statement made in such oath or declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than 5 years, or both

When to File an AIA-Compliant Inventor’s Oath or Declaration 

An AIA-compliant inventor's oath or declaration is required for any application filed on or after September 16, 2012.  This covers non-provisional applications, including continuing applications (i.e., continuation, continuation-in-part, divisional, and “bypass” applications) and reissue applications.  A “bypass” application refers to an international (PCT) application filed as a continuing application under 35 U.S.C. 111(a) and 37 C.F.R. 1.53(b) and thus “bypassing” national stage entry under 35 U.S.C. 371.  For an international (PCT) application filed before September 16, 2012, and entering the national stage on or after September 16, 2012, an AIA-compliant inventor's oath or declaration is not required.  But for an international (PCT) application filed after September 16, 2012, and entering the national stage after September 16, 2012, an AIA-compliant inventor’s oath or declaration is required.  The table below summarizes the situations when an AIA-compliant inventor's oath or declaration is needed.

Type of Application Filing Date AIA-Compliant Inventor’s Oath or Declaration Required?
U.S. Application
(non-provisional applications, including continuing and reissue applications)
U.S. filing on or after 9/16/2012 Yes
International “Bypass” Applications
(filed under 35 U.S.C. 111(a))
U.S. filing on or after 9/16/2012
International PCT Applications
(entering National Stage under 35 U.S.C. 371)
PCT filing on or after 9/16/2012

Use of an Application Data Sheet (ADS)

An ADS is a document containing bibliographic information regarding an application, such as the identity of the named inventors, the identity of the applicant if different from the inventors, and any foreign priority or domestic benefit information. 

An ADS must be filed with an application where: (i) submission of the inventor’s oath or declaration is to be postponed; (ii) each inventor’s oath or declaration identifies only the inventor (or person) executing that particular oath or declaration and not all of the inventors; (iii) there is a claim for domestic benefit (37 C.F.R. 1.78), or foreign priority claim (37 C.F.R. 1.55)(except foreign priority for national stage applications); or (iv) there is an identification of applicants other than the inventors under 37 C.F.R. 1.46 (except for national stage applications, where the applicant is the person identified in the international stage). 

As to situations (i) and (ii), the Office must know the names of all of the inventors before examination begins in order to apply the correct prior art and to make a proper double patenting determination.

As to situation (iii), the Office has centralized the location of foreign priority and domestic benefit claims to the ADS.  This benefits applicants, the public, and the Office by making it easier to find this information.  Further, the Office will recognize such claims only if they appear in the ADS.

As to situation (iv), the Office needs to know who the applicant is, particularly where a power of attorney is being submitted by other than the inventors.

Finally, even when an ADS is not required, it is a best practice to use an ADS to aid in the correct identification of bibliographic information on the filing receipt.  An ADS must be signed by the applicant or the applicant’s representative.

Postponed Submission of an Inventor’s Oath or Declaration

Where an inventor’s oath or declaration or a signed ADS is not submitted on filing of the application, the Office will mail a notice to file missing parts requiring either an oath or declaration, or an ADS.  Surcharge practice has not changed.  Submission of an inventor’s oath or declaration later than the filing date of the application will cause the Office to mail a notice to file missing parts requiring a surcharge if not already paid, even where an ADS is submitted with the application on filing.  Where an ADS has been submitted, the Office will not mail a missing parts notice requiring submission of the inventor’s oath or declaration.  The Office may, however, mail an informational notice to notify the applicant that an inventor’s oath or declaration has not been submitted for each named inventor or that the submitted oath or declaration is non-compliant.  Where the application is otherwise in condition for allowance, the Office will mail a Notice of Allowability with a 3 month non-extendable period to submit the required inventor’s oath or declaration.

Combination Assignment and Inventor’s Oath or Declaration

An assignment document may contain the statements required to be included in an inventor’s oath or declaration and thereby serve as the inventor’s oath or declaration.  The Office reference to such a dual purpose document as an “assignment-statement.”  If an applicant chooses to file an assignment-statement and reduce the number of documents to be submitted to the USPTO for a particular application, the applicant must record the assignment-statement in the USPTO Assignment Database.   

To record an assignment-statement in the Office’s Assignment Database, the assignment recordation cover sheet must set forth the application number.  Additionally, the assignment-statement must identify the application to which it relates, such as by name of the inventors, title of the invention, and the attorney docket number on the specification as filed.  See MPEP 602 VI. 

The best practice is to file an assignment-statement electronically per the following steps.  First, the applicant should file the application via EFS-Web and immediately obtain the application number.  Second, on the same day that the applicant files the application, the applicant should submit the assignment-statement for recording via the Electronic Patent Assignment System (EPAS).  In EPAS, the applicant should check the box on the assignment recordation cover sheet to indicate that the document is intended to have a dual purpose (i.e., as both an assignment and the inventor’s oath or declaration).  Checking the box on the assignment recordation cover sheet will trigger the Office to place a copy of the assignment-statement into the application file as well as record it in the assignment database.  If the assignment-statement is recorded on the same day that the application is filed, the applicant can avoid paying the surcharge for the delayed filing of the inventor’s oath or declaration.

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