Strategic Plan > Index to Action Papers > Assignee Filing - Allow Assignee to Make the Application and Sign the Oath

Action:

Propose amendments to 35 U.S.C. § 115 to permit an assignee of the entire interest to file a patent application and sign the oath.

Background Information:

Currently, the inventor(s) must make the application for patent and the inventor(s) must sign the oath or declaration.  The assignee cannot file a patent application and sign the oath or declaration except where all of the inventors refuse to execute the application or cannot be found or reached after diligent effort (and the requirements under 37 CFR 1.47(b) are met) or where the application is a reissue application which does not seek to enlarge the scope of the claims of the original patent (a requirement in reissue that we are seeking to change in another initiative, but which statutory change is provided with the change to 35 U.S.C. § 115 below).  Once the inventors of an invention have been identified, and the inventors have provided information that may be material to the examiner's decision of patentability, and have assigned their rights in the invention to an assignee, there is no need to require the inventors to participate in the process by signing the oath or declaration or any supplemental oath or declaration that may be required.  If the assignee of the entire interest were permitted to sign the oath or declaration, there would be greater flexibility for applicants.  The proposed change would also simplify Office processing and eliminate delays.  The requirement for an oath or declaration should still be maintained since it provides some assurance that the appropriate degree of consideration is given to the determination as to who are the inventors.

Option Considered:

Amend 35 U.S.C. § 115 to provide that the application may be made by the assignee of the entire interest. 

USPTO Recommended Course of Action: 

Pursue option considered..

Proof of Concept (POC): 

POC is not recommended for this initiative.  This proposal has received  approval from the user community and was not the subject of commentary suggesting that a pilot or further study of the proposal should be done.  Further, conducting a pilot of the proposal is not viable given the need for a statutory revision in order to implement the proposal. 

Timing: 

This statutory initiative is intended to be part of the second phase of legislation supporting the 21^st Century Strategic Plan or can be introduced with any legislation to implement unity of invention. 

Details:

Amend 35 U.S.C. § 115 by adding "[t]he application may be made by the assignee of the entire interest upon compliance with requirements and under such terms and conditions as prescribed by the Director."  Amend 35 U.S.C. § 251 by deleting "except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent."

35 U.S.C. §§ 115 and 251 with Proposed Changes.

Proposed changes shown with underlining and strikeouts

§ 115  Oath of applicant.

The applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent; and shall state of what country he is a citizen.  Such oath may be made before any person within the United States authorized by law to administer oaths, or, when made in a foreign country, before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority is proved by certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States.  Such oath is valid if it complies with the laws of the state or country where made. 

The application may be made by the assignee of the entire interest upon compliance with requirements and under such terms and conditions as prescribed by the Director

.  When the application is made as provided in this title by a person other than the inventor, the oath may be so varied in form that it can be made by him.  For purposes of this section, a consular officer shall include any United States citizen serving overseas, authorized to perform notarial functions pursuant to section 1750 of the Revised Statutes, as amended (22 U.S.C. 4221).

§ 251  Reissue of defective patents.

Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less then he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent.  No new matter shall be introduced into the application for reissue.

The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.

The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent.

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