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602 Oaths and Declarations [R-11.2013]

35 U.S.C. 25   Declaration in lieu of oath.

  • (a) The Director may by rule prescribe that any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration in such form as the Director may prescribe, such declaration to be in lieu of the oath otherwise required.
  • (b) Whenever such written declaration is used, the document must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both ( 18 U.S.C. 1001).

35 U.S.C. 26   Effect of defective execution.

Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be executed in a specified manner may be provisionally accepted by the Director despite a defective execution, provided a properly executed document is submitted within such time as may be prescribed.

A copy, such as a photocopy or facsimile transmission, of an originally executed oath or declaration is encouraged to be filed (see MPEP § 502.01), especially since applications are maintained in electronic form, not paper. The original should be retained by applicant, or his or her representative as evidence of authenticity. If a question of authenticity arises, the U.S. Patent and Trademark Office may require submission of the original. See 37 CFR 1.4(d)(1)(ii).

I. OATHS

37 CFR 1.66 Statements under oath.

An oath or affirmation may be made before any person within the United States authorized by law to administer oaths. An oath made in a foreign country may be made 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 shall be proved by a certificate of a diplomatic or consular officer of the United States, or by an 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. The oath shall be attested in all cases in this and other countries, by the proper official seal of the officer before whom the oath or affirmation is made. Such oath or affirmation shall be valid as to execution if it complies with the laws of the State or country where made. When the person before whom the oath or affirmation is made in this country is not provided with a seal, his official character shall be established by competent evidence, as by a certificate from a clerk of a court of record or other proper officer having a seal.

An oath or affirmation may be made before any person within the United States authorized by law to administer oaths. An oath made in a foreign country may be made in accordance with 37 CFR 1.66. The authority of military personnel to act as a notary is set forth in 10 U.S.C. 1044(a).

The language of 35 U.S.C. 115 and 37 CFR 1.66 is such that an attorney in the application is not barred from administering the oath as notary. The Office presumes that an attorney acting as notary is cognizant of the extent of his or her authority and jurisdiction and will not knowingly jeopardize his or her client’s rights by performing an illegal act. If such practice is permissible under the law of the jurisdiction where the oath is administered, then the oath is a valid oath.

The law of the District of Columbia prohibits the administering of oaths by the attorney in the case. If the oath is known to be void because of being administered by the attorney in a jurisdiction where the law holds this to be invalid, a new oath or declaration should be submitted. The application file may be referred to the Office of Enrollment and Discipline. See 37 CFR 1.66 and MPEP § 604.

A.Seal

A seal is usually impressed on an oath. Documents with seals cannot be adequately scanned for retention in an Image File Wrapper, and because the Office maintains patent applications in an image form, the Office strongly encourages the use of declarations rather than oaths. However, oaths executed by military personnel in accordance with 10 U.S.C. 1044(a) and those executed in many states including Alabama, Louisiana, Maryland, Massachusetts, New Jersey, New York, Rhode Island, South Carolina, and Virginia need not be impressed with a seal. See paragraph B. below for information regarding venue.

When the person before whom the oath or affirmation is made in this country is not provided with a seal, his or her official character shall be established by competent evidence, as by a certificate from a clerk of a court of record or other proper officer having a seal, except as noted above. When the issue concerns the authority of the person administering the oath, proof of authority may be required. Depending on the jurisdiction, the seal may be either embossed or rubber stamped. The latter should not be confused with a stamped legend indicating only the date of expiration of the notary’s commission.

In some jurisdictions, the seal of the notary is not required but the official title of the officer must be on the oath. This applies to Alabama, California (certain notaries), Louisiana, Maryland, Massachusetts, New Jersey, New York, Ohio, Puerto Rico, Rhode Island, South Carolina, and Virginia.

See MPEP § 602.04 for foreign executed oaths.

B.Venue

That portion of an oath or affidavit indicating where the oath is taken is known as the venue. Where the county and state in the venue agree with the county and state in the seal, no problem arises. If the venue and seal do not correspond in county and state, the jurisdiction of the notary must be determined from statements by the notary appearing on the oath. Venue and notary jurisdiction must correspond or the oath is improper. The oath should show on its face that it was taken within the jurisdiction of the certifying officer or notary. This may be given either in the venue or in the body of the jurat. Otherwise, a new oath or declaration, or a certificate of the notary that the oath was taken within his or her jurisdiction, should be submitted.

II. DECLARATIONS

37 CFR 1.68  Declaration in lieu of oath.

Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration. Such declaration may be used in lieu of the oath otherwise required, if, and only if, the declarant is on the same document, warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant's own knowledge are true and that all statements made on information and belief are believed to be true.

18 U.S.C. 1001   Statements or entries generally.

Whoever, in any matter within the jurisdiction of any department or agency of the United States knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be fined not more than $10,000 or imprisoned not more than five years, or both.

By statute, 35 U.S.C. 25, the Director has been empowered to prescribe instances when a written declaration may be accepted in lieu of the oath for "any document to be filed in the Patent and Trademark Office." A declaration may be submitted in lieu of an oath in any document filed in the Office provided the declaration complies with the requirements of 37 CFR 1.68. A 37 CFR 1.68 declaration need not be ribboned to the other papers, even if signed in a country foreign to the United States. However, because it is an integral part of the application, it must be maintained together therewith. When a declaration is used, it is unnecessary to appear before any official in connection with the making of the declaration.

The filing of a written declaration is acceptable in lieu of an original application oath that is informal.

Office personnel are authorized to accept a statutory declaration under 28 U.S.C. 1746 filed in the U.S. Patent and Trademark Office in lieu of an "oath" or declaration under 35 U.S.C. 25 and 37 CFR 1.68, provided the statutory declaration otherwise complies with the requirements of law.

Section 1746 of Title 28 of the United States Code provides:

Whenever, under any law of the United States or under any rule, regulation, order, or requirement made pursuant to law, any matter is required or permitted to be supported, evidenced, established, or proved by the sworn declaration, verification, certificate, statement, oath or affidavit, in writing of the person making the same (other than a deposition, or an oath of office, or an oath required to be taken before a specified official other than notary public), such matter may, with like force and effect, be supported, evidenced, established, or proved by the unsworn declaration, certificate, verification, or statement, in writing of such person which is subscribed by him, as true under penalty of perjury, and dated, in substantially the following form:

[1] If executed without the United States:

"I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on (date).

(Signature)."

[2] If executed within the United States its territories, possessions, or commonwealths:

"I declare (or certify, verify, or state) under penalty of perjury that the foregoing is true and correct. Executed on (date).

(Signature)."

602.01 Naming the Inventor; Inventor's Oath or Declaration [R-10.2019]

The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in 37 CFR 1.64. See MPEP § 602.01(a) for the requirements of an inventor’s oath or declaration in an application filed on or after September 16, 2012. See MPEP § 602.01(b) for the requirements of an original oath or declaration in an application filed before September 16, 2012.

See MPEP § 2109 for the definition of, and requirements for, inventorship and MPEP §§ 602.09 and 2109.01 for information pertaining to joint inventorship.

I. NAMING INVENTORSHIP IN APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012

[Editor Note: See subsection II., below, for naming inventorship in applications filed before September 16, 2012.]

37 CFR 1.41 Inventorship.

  • (a) An application must include, or be amended to include, the name of the inventor for any invention claimed in the application.
  • (b) The inventorship of a nonprovisional application under 35 U.S.C. 111(a) is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed before or concurrently with the inventor's oath or declaration. If an application data sheet is not filed before or concurrently with the inventor's oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor's oath or declaration, except as provided for in §§ 1.53(d)(4) and 1.63(d). Once an application data sheet or the inventor's oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to § 1.48. If neither an application data sheet nor the inventor's oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(b), unless the applicant files a paper, including the processing fee set forth in § 1.17(i), supplying the name or names of the inventor or joint inventors.
  • (c) The inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by § 1.51(c)(1). Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any correction of inventorship must be pursuant to § 1.48. If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying the name or names of the inventor or joint inventors.
  • (d) In a nonprovisional application under 35 U.S.C. 111(a) filed without an application data sheet or the inventor’s oath or declaration, or in a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name and residence of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
  • (e) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371. Unless the initial submission under 35 U.S.C. 371 is accompanied by an application data sheet in accordance with § 1.76 setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis.
  • (f) The inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). Any correction of inventorship must be pursuant to § 1.48.

An application must include, or be amended to include, the name of the inventor for any invention claimed in the application (the inventorship). See 35 U.S.C. 115(a) and 37 CFR 1.41(a).

As provided in 37 CFR 1.41(b), the applicant may name the inventorship of a nonprovisional application under 35 U.S.C. 111(a) in the application data sheet in accordance with 37 CFR 1.76 or in the inventor’s oath or declaration. The inventorship of a nonprovisional application under 35 U.S.C. 111(a) is the inventor or joint inventors set forth in the application data sheet in accordance with 37 CFR 1.76 filed before or concurrently with the inventor’s oath or declaration. An application data sheet must be signed to comply with 37 CFR 1.76. An unsigned application data sheet is treated as only a transmittal letter. See 37 CFR 1.76(e). If an application data sheet is not filed before or concurrently with the inventor’s oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor’s oath or declaration except as provided in 37 CFR 1.53(d)(4) (continued prosecution applications for designs) and 37 CFR 1.63(d) (continuing applications). Once an application data sheet or the inventor’s oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to 37 CFR 1.48(a). If neither an application data sheet nor inventor’s oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to 37 CFR 1.53(b), unless the applicant files a paper, including the processing fee set forth in 37 CFR 1.17(i), supplying the name or names of the inventor or joint inventors.

Applicants who wish to take advantage of the ability to name the inventors in an application data sheet rather than the inventor’s oath or declaration should take care to ensure that an application data sheet under 37 CFR 1.76 that is signed in compliance with 37 CFR 1.33(b) is present on filing, or at least prior to the filing of any inventor’s oath or declaration in the application. If an inventor’s oath or declaration is filed in the application prior to the filing of an application data sheet under 37 CFR 1.76 that is signed in compliance with 37 CFR 1.33(b), the inventorship named in the inventor’s oath or declaration controls. For example, if an inventor’s oath or declaration naming only inventor "A" is present on filing without an accompanying application data sheet, and a signed application data sheet is filed naming inventors "A" and "B" is subsequently filed in the application, the application will be treated as naming only inventor "A" (the inventor provided in the inventor’s oath or declaration) until the inventorship is corrected under 37 CFR 1.48(a).

As provided in 37 CFR 1.41(c), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1). Once a cover sheet as prescribed by 37 CFR 1.51(c)(1) is filed in a provisional application, any correction of inventorship must be pursuant to 37 CFR 1.48. If a cover sheet as prescribed by 37 CFR 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to 37 CFR 1.53(c), unless the applicant files a paper including the processing fee set forth in 37 CFR 1.17(q), supplying the name or names of the inventor or joint inventors.

37 CFR 1.41(d) provides that in either a nonprovisional application under 35 U.S.C. 111(a) filed without an application data sheet or the inventor’s oath or declaration, or in a provisional application filed without a cover sheet as prescribed by 37 CFR 1.51(c)(1), the name and residence of each person believed to be an actual inventor should be provided when the application papers filed pursuant to 37 CFR 1.53(b) or (c) are filed. Naming the individuals known to be inventors or the persons believed to be the inventors may enable the Office to identify the application, if applicant does not know the application number. Where no inventor(s) is known and applicant cannot name a person believed to be an inventor on filing, the Office requests that an alphanumeric identifier be submitted for the application. The use of very short identifiers should be avoided to prevent confusion. Without supplying at least a unique identifying name the Office may have no ability or only a delayed ability to match any papers submitted after filing of the application and before issuance of an identifying application number with the application file. Any identifier used that is not an inventor’s name should be specific, alphanumeric characters of reasonable length, and should be presented in such a manner that it is clear to application processing personnel what the identifier is and where it is to be found. Failure to apprise the Office of an application identifier such as the names of the inventors or the alphanumeric identifier being used may result in applicants having to resubmit papers that could not be matched with the application and proof of the earlier receipt of such papers where submission was time dependent.

37 CFR 1.41(e) provides that the inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with 37 CFR 1.76 filed with the initial submission under 35 U.S.C. 371. Thus, the applicant in an international application may change inventorship as to the U.S. at the time of national stage entry by simply filing an application data sheet in accordance with 37 CFR 1.76 with the initial submission under 35 U.S.C. 371 naming the inventor or joint inventors. Unless the initial submission under 35 U.S.C. 371 is accompanied by an application data sheet in accordance with 37 CFR 1.76 setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis . 37 CFR 1.41(e) does not provide the ability to name the inventor or joint inventors via the inventor’s oath or declaration even when an application data sheet in accordance with 37 CFR 1.76 is not provided.

37 CFR 1.41(f) was added to set forth the inventorship in an international design application designating the United States. Specifically, the inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). 37 CFR 1.41(f) further provides that any correction of inventorship must be pursuant to 37 CFR 1.48.

II. NAMING INVENTORSHIP IN AN APPLICATION FILED BEFORE SEPTEMBER 16, 2012

[Editor Note: See subsection I., above, for naming inventorship in applications filed on or after September 16, 2012.]

37 CFR 1.41 (pre‑AIA) Applicant for patent.

  • (a) A patent is applied for in the name or names of the actual inventor or inventors.
    • (1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63, except as provided for in §§ 1.53(d)(4) and 1.63(d). If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b), unless applicant files a paper, including the processing fee set forth in § 1.17(i), supplying or changing the name or names of the inventor or inventors.
    • (2) The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1). If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying or changing the name or names of the inventor or inventors.
    • (3) In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63 or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name, residence, and citizenship of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
    • (4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis. See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv)1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371).
  • (b) Unless the contrary is indicated the word "applicant" when used in these sections refers to the inventor or joint inventors who are applying for a patent, or to the person mentioned in §§ 1.42, 1.43 or 1.47 who is applying for a patent in place of the inventor.
  • (c) Any person authorized by the applicant may physically or electronically deliver an application for patent to the Office on behalf of the inventor or inventors, but an oath or declaration for the application (§ 1.63) can only be made in accordance with § 1.64.
  • (d) A showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.

Pre-AIA 37 CFR 1.41(a)(1) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as provided for in 37 CFR 1.53(d)(4) and pre-AIA 37 CFR 1.63(d).

For applications filed prior to September 16, 2012, where the first-filed executed oath or declaration sets forth an inventive entity which is different from the inventive entity initially set forth at the time of filing of the application, the actual inventorship of the application will be taken from the executed oath or declaration. See Pre-AIA 37 CFR 1.41(a)(1).

As provided in pre-AIA 37 CFR 1.41(a)(2), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1).

See MPEP §§ 602.08(b) and 605.02 for additional information.

III. CORRECTION OF INVENTORSHIP

For correction of inventorship, see MPEP § 602.01(c)et seq. Note that requests to correct the inventorship under 37 CFR 1.48 filed on or after September 16, 2012 (regardless of the application filing date) are treated by OPAP. If the request is granted, OPAP will correct the Office records and send a corrected filing receipt.

602.01(a) Inventor’s Oath or Declaration in Application Filed On or After September 16, 2012 [R-10.2019]

[Editor Note: See MPEP § 602.01(b) for information pertaining to an inventor's oath or declaration in applications filed before September 16, 2012.]

35 U.S.C. 115  Inventor’s oath or declaration.

  • (a) NAMING THE INVENTOR; INVENTOR’S OATH OR DECLARATION.—An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.
  • (b) REQUIRED STATEMENTS.—An oath or declaration under subsection (a) shall contain statements that—
    • (1) the application was made or was authorized to be made by the affiant or declarant; and
    • (2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.
  • (c) ADDITIONAL REQUIREMENTS.—The Director may specify additional information relating to the inventor and the invention that is required to be included in an oath or declaration under subsection (a).
  • (d) SUBSTITUTE STATEMENT.—
    • (1) IN GENERAL.—In lieu of executing an oath or declaration under subsection (a), the applicant for patent may provide a substitute statement under the circumstances described in paragraph (2) and such additional circumstances that the Director may specify by regulation.
    • (2) PERMITTED CIRCUMSTANCES.—A substitute statement under paragraph (1) is permitted with respect to any individual who—
      • (A) is unable to file the oath or declaration under subsection (a) because the individual—
        • (i) is deceased;
        • (ii) is under legal incapacity; or
        • (iii) cannot be found or reached after diligent effort; or
      • (B) is under an obligation to assign the invention but has refused to make the oath or declaration required under subsection (a).
    • (3) CONTENTS.—A substitute statement under this subsection shall—
      • (A) identify the individual with respect to whom the statement applies;
      • (B) set forth the circumstances representing the permitted basis for the filing of the substitute statement in lieu of the oath or declaration under subsection (a); and
      • (C) contain any additional information, including any showing, required by the Director.
  • (e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT OF RECORD.—An individual who is under an obligation of assignment of an application for patent may include the required statements under subsections (b) and (c) in the assignment executed by the individual, in lieu of filing such statements separately.
  • (f) TIME FOR FILING.—The applicant for patent shall provide each required oath or declaration under subsection (a), substitute statement under subsection (d), or recorded assignment meeting the requirements of subsection (e) no later than the date on which the issue fee for the patent is paid.
  • (g) EARLIER-FILED APPLICATION CONTAINING REQUIRED STATEMENTS OR SUBSTITUTE STATEMENT.—
    • (1) EXCEPTION.—The requirements under this section shall not apply to an individual with respect to an application for patent in which the individual is named as the inventor or a joint inventor and that claims the benefit under section 120, 121, 365(c), or 386(c) of the filing of an earlier-filed application, if—
      • (A) an oath or declaration meeting the requirements of subsection (a) was executed by the individual and was filed in connection with the earlier-filed application;
      • (B) a substitute statement meeting the requirements of subsection (d) was filed in connection with the earlier filed application with respect to the individual; or
      • (C) an assignment meeting the requirements of subsection (e) was executed with respect to the earlier-filed application by the individual and was recorded in connection with the earlier-filed application.
    • (2) COPIES OF OATHS, DECLARATIONS, STATEMENTS, OR ASSIGNMENTS.—Notwithstanding paragraph (1), the Director may require that a copy of the executed oath or declaration, the substitute statement, or the assignment filed in connection with the earlier-filed application be included in the later-filed application.
  • (h) SUPPLEMENTAL AND CORRECTED STATEMENTS; FILING ADDITIONAL STATEMENTS.—
    • (1) IN GENERAL.—Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement at any time. If a change is made in the naming of the inventor requiring the filing of 1 or more additional statements under this section, the Director shall establish regulations under which such additional statements may be filed.
    • (2) SUPPLEMENTAL STATEMENTS NOT REQUIRED.—If an individual has executed an oath or declaration meeting the requirements of subsection (a) or an assignment meeting the requirements of subsection (e) with respect to an application for patent, the Director may not thereafter require that individual to make any additional oath, declaration, or other statement equivalent to those required by this section in connection with the application for patent or any patent issuing thereon.
    • (3) SAVINGS CLAUSE.—A patent shall not be invalid or unenforceable based upon the failure to comply with a requirement under this section if the failure is remedied as provided under paragraph (1).
  • (i) ACKNOWLEDGMENT OF PENALTIES.—Any declaration or statement filed pursuant to this section shall contain an acknowledgment that any willful false statement made in such declaration or statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.

37 CFR 1.63 Inventor's oath or declaration.

  • (a) The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided for in § 1.64 . An oath or declaration under this section must:
    • (1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;
    • (2) Identify the application to which it is directed;
    • (3) Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and
    • (4) State that the application was made or was authorized to be made by the person executing the oath or declaration.
  • (b) Unless the following information is supplied in an application data sheet in accordance with § 1.76, the oath or declaration must also identify:
    • (1) Each inventor by his or her legal name; and
    • (2) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
  • (c) A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56. There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing.
  • (d)
    • (1) A newly executed oath or declaration under § 1.63, or substitute statement under § 1.64 , is not required under §§ 1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64 , was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.
    • (2) The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.
    • (3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64 .
  • (e)
    • (1) An assignment may also serve as an oath or declaration required by this section if the assignment as executed:
      • (i) Includes the information and statements required under paragraphs (a) and (b) of this section; and
      • (ii) A copy of the assignment is recorded as provided for in part 3 of this chapter.
    • (2) Any reference to an oath or declaration under this section includes an assignment as provided for in this paragraph.
  • (f) With respect to an application naming only one inventor, any reference to the inventor's oath or declaration in this chapter includes a substitute statement executed under § 1.64 . With respect to an application naming more than one inventor, any reference to the inventor's oath or declaration in this chapter means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless otherwise clear from the context.
  • (g) An oath or declaration under this section, including the statement provided for in paragraph (e) of this section, must be executed (i.e., signed) in accordance either with § 1.66 or with an acknowledgment that any willful false statement made in such declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.
  • (h) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1) will be placed in the file record of the application or patent, but may not necessarily be reviewed by the Office. Any request for correction of the named inventorship must comply with § 1.48 in an application and § 1.324 in a patent.
I. IDENTITY OF INVENTOR(S), APPLICATION, AND REQUIRED STATEMENTS

The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in 37 CFR 1.64 . See 37 CFR 1.63(a) and 35 U.S.C. 115. An oath or declaration must: (1) identify the inventor or joint inventor executing the oath or declaration by his or her legal name; (2) identify the application to which it is directed; (3) include a statement the person executing the oath or declaration believes the named inventor or joint inventors to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and (4) state that the application was made or authorized to be made by the person executing the oath or declaration. Items (3) and (4) above are requirements of 35 U.S.C. 115(a) and (b).

A.Inventor Name And Mailing Address

The requirements that an oath or declaration must identify the inventor or joint inventor executing the oath or declaration by his or her legal name and identify the application to which it is directed are necessary for the Office to ensure compliance with the requirement of 35 U.S.C. 115(a). Specifically, 35 U.S.C. 115(a) requires that each individual who is the inventor or a joint inventor of a claimed invention in an application for patent has executed an oath or declaration in connection with the application (except as provided for in 35 U.S.C. 115). See MPEP § 602.08(b) for additional information pertaining to inventor names.

Unless such information is supplied in an application data sheet in accordance with 37 CFR 1.76, the oath or declaration must also identify: (1) each inventor by his or her legal name; (2) a mailing address where the inventor or each joint inventor customarily receives mail; and (3) a residence for each inventor or joint inventor who lives at a location which is different from where the inventor or joint inventor customarily receives mail. See 37 CFR 1.63(b).

For nonprovisional international design applications, 37 CFR 1.1021(d)(3) provides that the requirement in 37 CFR 1.63(b) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, will be considered satisfied by the presentation of such information in the international design application prior to international registration.

See also MPEP § 602.08(a) for additional details regarding inventor bibliographic information.

If applicant files an application data sheet (ADS) that identifies each inventor by his or her legal name, in accordance with 37 CFR 1.76, the applicant is not required to name each inventor in a single oath or declaration. This permits each joint inventor to execute an oath or declaration stating only that the joint inventor executing the oath or declaration is an original joint inventor of the claimed invention in the application for which the oath or declaration is being submitted. To be in accordance with 37 CFR 1.76, the application data sheet must be signed in compliance with 37 CFR 1.33(b). An unsigned application data sheet will be treated only as a transmittal letter.

B.Identification Of Application

See MPEP § 602.08(c) for the minimum information necessary to identify the application to which an oath or declaration under 37 CFR 1.63 is directed.

C.Required Statements

An oath or declaration under 37 CFR 1.63 in an application filed on or after September 16, 2012 is no longer required to contain the "reviewed and understands" clause and "duty to disclose" clause of pre-AIA 37 CFR 1.63(b)(2) and (b)(3). However, 37 CFR 1.63 still requires that a person executing an oath or declaration review and understand the contents of the application, and be aware of the duty to disclose under 37 CFR 1.56. See 37 CFR 1.63(c). There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute (i.e., understand) the document that the person is executing.

II. ASSIGNMENT-STATEMENT AS OATH OR DECLARATION

37 CFR 1.63(e) implements the provisions of 35 U.S.C. 115(e). An assignment may also serve as an oath or declaration required by 37 CFR 1.63 if the assignment: (1) includes the information and statements required under 37 CFR 1.63(a) and (b); and (2) a copy of the assignment is recorded as provided for in 37 CFR part 3. The assignment, including the information and statements required under 37 CFR 1.63(a) and (b), must be executed by the individual who is under the obligation of assignment. Any reference to an oath or declaration includes an assignment as provided for in 37 CFR 1.63(e).

Applicants should be mindful that 37 CFR 3.31 requires a conspicuous indication, such as by use of a check-box on the assignment cover sheet, to alert the Office that an assignment submitted with an application is being submitted for a dual purpose: recording in the assignment database, such as to support a power of attorney, and for use in the application as the inventor’s oath or declaration. Assignments cannot be recorded unless an application number is provided against which the assignment is to be recorded. When filing an application on paper, if an assignment is submitted for recording along with the application, the assignment is separated from the paper application after the application is assigned an application number and is forwarded to the Assignment Recordation Branch for recording in its database. The assignment does not become part of the application file. If the applicant indicates that an assignment-statement is also an oath or declaration, the Office will scan the assignment into the Image File Wrapper (IFW) file for the application before forwarding it to the Assignment Recordation Branch.

For EFS-Web filing of application papers, EFS-Web does not accept assignments for recording purposes when filing an application. Assignments submitted via EFS-Web will be made of record in the application, and will not be forwarded to the Assignment Recordation Branch for recordation by the Office. Recording of assignments may only be done electronically in EPAS (Electronic Patent Assignment System). If an applicant files the assignment-statement for recording via EPAS and utilizes the check-box, the Office will place a copy of the assignment-statement in the application file.

III. EXECUTION OF INVENTOR’S OATH OR DECLARATION

With respect to an application naming more than one inventor, any reference to the inventor’s oath or declaration in 37 CFR chapter I means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless it is otherwise clear from the context. Thus, any requirement in 37 CFR chapter I for the inventor’s oath or declaration with respect to an application naming more than one inventor is met if an oath or declaration under 37 CFR 1.63, an assignment-statement under 37 CFR 1.63(e), or a substitute statement under 37 CFR 1.64 executed by or with respect to each joint inventor is filed. See 37 CFR 1.63(f).

An oath or declaration under 37 CFR 1.63, including the assignment-statement provided for in 37 CFR 1.63(e), must be executed (i.e., signed) in accordance either with 37 CFR 1.66, or with an acknowledgement that any willful false statement made in such declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both. See 37 CFR 1.63(g) and 35 U.S.C. 115(i). The inventor’s oath or declaration must be executed (i.e., signed) by the inventor or the joint inventors, unless the inventor’s oath or declaration is a substitute statement under 37 CFR 1.64, which must be signed by the applicant, or an assignment-statement under 37 CFR 1.63(e), which must be signed by the inventor who is under the obligation of assignment of the patent application.

See MPEP § 602.08(b) for additional information regarding the execution of the inventor’s oath or declaration.

See 35 U.S.C. 115(g), 37 CFR 1.63(d) and MPEP § 602.05(a) regarding the use of copies of inventor’s oaths or declarations in continuing applications.

35 U.S.C. 115(h)(1) provides that any person making a statement under this section may at any time "withdraw, replace, or otherwise correct the statement at any time." 37 CFR 1.63(h) provides that an oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1) will be placed in the file record of the application or patent, but may not necessarily be reviewed by the Office.

IV. FORMS

Forms PTO/AIA/01 through PTO/AIA/09 may be used when submitting the inventor’s oath or declaration in an application filed on or after September 16, 2012. These forms and an "AIA Inventor's Oath or Declaration Quick Reference Guide" are available on the USPTO website at www.uspto.gov/patent/forms/forms-patent- applications-filed-or-after-september-16-2012.

602.01(b) Inventor’s Oath or Declaration in Application Filed Before September 16, 2012 [R-10.2019]

[Editor Note: See MPEP § 602.01(a) for information pertaining to an inventor’s oath or declaration in applications filed on or after September 16, 2012.]

35 U.S.C. 115  (pre-AIA) 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. 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).

37 CFR 1.63 (pre-AIA) Oath or declaration.

  • (a) An oath or declaration filed under § 1.51(b)(2) as a part of a nonprovisional application must:
    • (1) Be executed, i.e., signed, in accordance with either § 1.66 or § 1.68. There is no minimum age for a person to be qualified to sign, but the person must be competent to sign, i.e., understand the document that the person is signing;
    • (2) Identify each inventor by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial;
    • (3) Identify the country of citizenship of each inventor; and
    • (4) State that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.
  • (b) In addition to meeting the requirements of paragraph (a) of this section, the oath or declaration must also:
    • (1) Identify the application to which it is directed;
    • (2) State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims, as amended by any amendment specifically referred to in the oath or declaration; and
    • (3) State that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.
  • (c) Unless such information is supplied on an application data sheet in accordance with § 1.76, the oath or declaration must also identify:
    • (1) The mailing address, and the residence if an inventor lives at a location which is different from where the inventor customarily receives mail, of each inventor; and
    • (2) Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made pursuant to § 1.55, and any foreign application 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.
  • (d)
    • (1) A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
      • (i) The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section;
      • (ii) The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application;
      • (iii) The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and
      • (iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application.
    • (2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application.
    • (3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under § 1.47, the copy of the executed oath or declaration for such prior application must be accompanied by:
      • (i) A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under § 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and
      • (ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application.
    • (4) Where the power of attorney or correspondence address was changed during the prosecution of the prior application, the change in power of attorney or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney or correspondence address during the prosecution of the prior application.
    • (5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
  • (e) A newly executed oath or declaration must be filed in any continuation-in-part application, which application may name all, more, or fewer than all of the inventors named in the prior application.

The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in pre-AIA 37 CFR 1.64. See pre-AIA 37 CFR 1.63(a) and pre-AIA 35 U.S.C. 115. When joint inventors execute separate oaths or declarations, each oath or declaration should make reference to the fact that the affiant is a joint inventor together with each of the other inventors indicating them by name. This may be done by stating that he or she does verily believe himself or herself to be the original, first and joint inventor together with "A" or "A & B, etc." as the facts may be.

Pre-AIA 37 CFR 1.63(a) and (b) set forth the basic requirements for an oath or declaration in an application filed before September 16, 2012.

See MPEP § 602.08et seq. for details specific to the required inventor bibliographic information, signature, and name, and to the identification of the application to which the oath or declaration applies.

Unless included in an application data sheet, oaths and declarations must make reference to any foreign application for patent (or inventor’s certificate) for which priority is claimed and any foreign application filed prior to the filing date of an application on which priority is claimed. See pre-AIA 37 CFR 1.63(c)(2).

The applicant is required to recite all foreign applications filed prior to the application on which priority is claimed. It is required to give the foreign application number and name of the country or office in which filed, as well as the filing date of each foreign application to which priority is claimed.

See MPEP § 602.03 for information pertaining to defective oaths or declarations.

Forms PTO/SB/01 and PTO/SB/01A may be used when submitting the inventor’s oath or declaration in an application filed before September 16, 2012.

Declaration for Utility or Design Patent Application - (37 CFR 1.63)
DECLARATION - Utility or Design Patent Application
DECLARATION - Utility or Design Patent Application
Privacy Act Statement
DECLARATION (37 CFR 1.63) FOR UTILITY OR DESIGN APPLICATION USING AN APPLICATION DATA SHEET (37 CFR 1.76)

602.01(c) Correction of Inventorship, Name of Inventor, and Order of Names in an Application [R-10.2019]

I. NAMING INVENTORSHIP

The Office will issue a filing receipt listing the inventors identified at the time of filing of the application even if the application was filed without an executed oath or declaration. See MPEP § 602.01 for information specific to naming inventorship. Correction of inventorship may be requested under 37 CFR 1.48 or may be obtained by filing a continuing application under 37 CFR 1.53.

See MPEP § 601.01(a), subsection II for information regarding completion of an nonprovisional application subsequent to the filing date pursuant to 37 CFR 1.53(f) (e.g., because the inventor’s oath or declaration was not present on filing date). See MPEP § 601.01(b) for information regarding completion of a provisional application subsequent to the filing date.

II. REQUESTS FOR CORRECTION OF INVENTORSHIP UNDER 37 CFR 1.48

Correction of inventorship in an application is permitted by amendment under 35 U.S.C. 116, which is implemented by 37 CFR 1.48.

For requests for correction of inventorship filed under 37 CFR 1.48(a) or (d) on or after September 16, 2012 (without regard to the filing date of the application), see MPEP § 602.01(c)(1).

For requests filed on or after September 16, 2012, under 37 CFR 1.48(f) to correct or update inventor names, or to change the order of inventor names, see MPEP § 602.01(c)(2). Note that requests under 37 CFR 1.48 filed on or after September 16, 2012 will be handled by the Office of Patent Application Processing (OPAP).

For requests for correction of inventorship filed before September 16, 2012 (without regard to the filing date of the application), see MPEP § 602.01(c)(3) in Revision 08.2017 of the Ninth Edition of the MPEP, published in January 2018.

For additional information pertaining to correction of inventorship in applications that name joint inventors, see MPEP § 602.09.

37 CFR 1.48 does not apply to reissue applications as is noted in its title, whether correcting an inventorship error in the patent to be reissued or in the reissue application itself. Where an error in inventorship in a patent is to be corrected via a reissue application, see 37 CFR 1.171- 37 CFR 1.175 and MPEP § 1412.04. Where such an error is to be corrected via a certificate of correction under 37 CFR 1.324, see MPEP § 1481. See 37 CFR 1.48(i) for correction of inventorship in interferences and contested cases before the Patent Trial and Appeal Board.

Although 37 CFR 1.48 does not contain a diligence requirement for filing the request, once an inventorship error is discovered, timeliness requirements under 37 CFR 1.116 and 37 CFR 1.312 apply.

A request under 37 CFR 1.48 will not be required:

(A)Where an application is to issue with the correct inventorship based on the allowed claims even though the application may have been filed with an incorrect inventorship based on the claims as originally submitted; and

(B)Where a court has issued an order under 35 U.S.C. 256 for correction of the inventorship of a patent. Such request should be submitted directly to the Certificate of Correction Division along with form PTO/SB/44 (see MPEP § 1485).

III. CORRECTION OF INVENTORSHIP BY FILING CONTINUING APPLICATION

Correction of inventorship may also be obtained by the filing of a continuing application under 37 CFR 1.53 without the need for filing a request under 37 CFR 1.48, although it should be noted that the requirements for a request under 37 CFR 1.48 filed on or after September 16, 2012 are minimal.

35 U.S.C. 120 permits a continuing application to claim the benefit of the filing date of a copending, previously filed, parent application provided there is inventorship overlap between the continuing application and the parent application. If the inventive entity of a continuing application includes an inventor named in the parent application, the inventorship overlap required by 35 U.S.C. 120 is met. However, refiling to change inventorship could result in the loss of a benefit claim if there is no overlap in inventorship between the two applications.

Note that a correction of inventorship may result in the loss of power of attorney. For applications filed on or after September 16, 2012, 37 CFR 1.32(e) provides that if the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to 37 CFR 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the 37 CFR 1.48 request. This provision does not preclude a practitioner from acting in a representative capacity pursuant to 37 CFR 1.34, if applicable.

For applications filed on or after September 16, 2012, the inventorship in the continuing application is the inventor or joint inventors specified in the ADS filed before or with the copy of the inventor’s oath or declaration from the earlier-filed application. If an ADS is not filed before or with the copy of the inventor’s oath or declaration, then the inventorship is the inventorship in the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement, signed by a 37 CFR 1.33(b) party, stating the name of each inventor in the continuing application. Any new joint inventor named in the continuing application must execute an inventor’s oath or declaration, except as provided for in 37 CFR 1.64.

602.01(c)(1) Correction of Inventorship in an Application – Request Filed On or After September 16, 2012 [R-10.2019]

[Editor Note: See MPEP § 602.01(c)(3) in Revision 08.2017 of the Ninth Edition of the MPEP, published in January 2018 for information about correction of inventorship for requests filed before September 16, 2012.]

37 CFR 1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application.

  • (a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41 must include:
    • (1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name; and
    • (2) The processing fee set forth in § 1.17(i).
  • (b) Inventor's oath or declaration for added inventor: An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.
  • (c) Any request to correct or change the inventorship under paragraph (a) of this section filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in § 1.17(d), unless the request is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.
  • (d) Provisional application. Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any request to correct or change the inventorship must include:
    • (1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and
    • (2) The processing fee set forth in § 1.17(q).
  • (e) Additional information may be required. The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.

*****

Requests for correction of inventorship under 37 CFR 1.48 filed on or after September 16, 2012 will be handled by the Office of Patent Application Processing (OPAP).

I. 37 CFR 1.48(a) - NONPROVISIONAL APPLICATION

Under 37 CFR 1.48(a), an applicant may submit a request for correction of inventorship in a nonprovisional patent application once the inventorship has been established. See MPEP § 602.08(b), subsection III, for details regarding naming inventorship in an application filed on or after September 16, 2012.

A request to correct the inventorship filed under 37 CFR 1.48(a) should identify the inventorship change and must be accompanied by a signed application data sheet (ADS) including the legal name, residence, and mailing address of the inventor or each actual joint inventor (see 37 CFR 1.76(b)(1)) and the processing fee set forth in 37 CFR 1.17(i). The application data sheet submitted with a request under 37 CFR 1.48(a) must identify the information being changed with underlining for insertions and strike-through or brackets for text removed.

37 CFR 1.48(a) enables an applicant to correct inventorship where an application sets forth improper inventorship as well as where the prosecution of an application results in the need to add or delete one or more inventors (e.g., due to the addition or deletion of claims or an amendment to the claims).

II. 37 CFR 1.48(b) – INVENTOR’S OATH OR DECLARATION FOR ADDED INVENTOR

37 CFR 1.48(b) provides that an oath or declaration as required by 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.

For applications filed on or after September 16, 2012, the oath or declaration required by 37 CFR 1.48(b) must comply with 37 CFR 1.63 in effect for applications filed on or after September 16, 2012. See MPEP § 602.01(a). A substitute statement in compliance with 37 CFR 1.64 is only available for applications filed on or after September 16, 2012. See MPEP § 604 for the requirements for substitute statements.

For applications filed before September 16, 2012, the oath or declaration required by 37 CFR 1.48(b) for an added inventor must comply with pre-AIA 37 CFR 1.63 which remains in effect for applications filed before September 16, 2012. See MPEP § 602.01(b).

III. 37 CFR 1.48(c) – REQUEST FILED AFTER OFFICE ACTION ON THE MERITS

37 CFR 1.48(c) provides that the fee set forth in 37 CFR 1.17(d) (in addition to the processing fee) is required when requests under 37 CFR 1.48 are filed after the Office action on the merits has been given or mailed in the application. However, the fee will not be required when inventors are deleted if the request to correct or change inventorship is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.

IV. 37 CFR 1.48(d) – PROVISIONAL APPLICATION

37 CFR 1.48(d) provides for correcting inventorship in provisional applications. Under 37 CFR 1.41(c), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1). Once a cover sheet is filed in a provisional application, any correction of inventorship must be pursuant to 37 CFR 1.48. If a cover sheet as prescribed by 37 CFR 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant 37 CFR 1.53(c), unless the applicant files a paper, including the processing fee set forth in 37 CFR 1.17(q), supplying the name or names of the inventor or joint inventors.

37 CFR 1.48(d) provides a procedure for adding or deleting or correcting or updating the name of an inventor in a provisional application. 37 CFR 1.48(d) requires that the submission include: (1) a request, signed by a party set forth in 37 CFR 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and (2) the fee set forth in 37 CFR 1.17(q). When an inventor is being added, applicants should also file a corrected application data sheet or a new cover sheet providing the residence of all inventors. See 37 CFR 1.51(c). For provisional applications, it may not be necessary to correct the inventorship under 37 CFR 1.48(d) unless there would be no overlap of inventors upon the filing of the nonprovisional application with the correct inventorship. The need to correct the inventorship in any U.S. nonprovisional or provisional application may in part be dependent upon whether a foreign filing under the Paris Convention will occur subsequent to the U.S. filing. See MPEP § 213.

V. FORM TO REQUEST CORRECTION OR CHANGE TO INVENTORSHIP

The Office has a form PTO/AIA/40 to request correction in a patent application (other than a reissue application) relating to inventorship, an inventor name, or order of names. The form is reproduced below and is also available on www.uspto.gov.

Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application - page 1
Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application - page 2
Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application - page 3

602.01(c)(2) Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012 [R-10.2019]

[Editor Note: See MPEP § 602.01(c)(3) in Revision 08.2017 of the Ninth Edition of the MPEP, published in January 2018 for a discussion of the requirements for requests to correct or update inventor name filed before September 16, 2012.]

37 CFR 1.48 Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.

*****

  • (f) Correcting or updating the name of an inventor: Any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include:
    • (1) An application data sheet in accordance with § 1.76that identifies each inventor by his or her legal name in the desired order; and
    • (2) The processing fee set forth in § 1.17(i).

*****

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

As of September 16, 2012, it is no longer necessary to have distinct procedures for correction of inventorship and for correction to the name of an inventor or to the order of the names of the inventors. 37 CFR 1.48(f) permits 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) and allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent). 37 CFR 1.48(f) specifically provides that any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include: (1) an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name in the desired order (identifying the information that is being changed as required by 37 CFR 1.76(c)(2)); and (2) the processing fee set forth in 37 CFR 1.17(i). In addition to the corrected application data sheet, the request should also identify the desired inventor name change.

See MPEP § 602.01(c)(1) for a copy of form PTO/AIA/40 that may be used to correct or update in inventor’s name or change the order of names in applications (other than reissue applications).

602.01(c)(3) [Reserved]

602.02 New Oath or Substitute for Original [R-11.2013]

Applicant may submit a new inventor’s oath or declaration to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration. See 37 CFR 1.67(a). Some deficiencies or inaccuracies can be corrected with an application data sheet (ADS) in accordance with 37 CFR 1.76. See MPEP § 601.05.

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 is filed that provides the required inventor information. If such an ADS is not filed, then each oath or declaration must name all of the inventors. See 37 CFR 1.63(a) and (b). Each separate oath or declaration by an inventor should be complete in itself.

For applications filed before September 16, 2012, where neither the original oath or declaration, nor the substitute oath or declaration is complete in itself, but each oath or declaration names all of the inventors and the two taken together give all the required data, no further oath or declaration is needed.

602.03 Office Finds the Inventor’s Oath or Declaration Defective [R-07.2015]

Examiners are no longer required to review inventor’s oaths or declarations that are filed in non-reissue applications. Non-examiner staff will review inventor’s oaths or declarations that are filed before allowance of an application for compliance with 37 CFR 1.63 or 1.64 and may send an informational notice to the applicant regarding any deficiencies. Similarly, non-examiner staff will review inventor’s oaths or declarations at or after allowance of an application for compliance with 37 CFR 1.63 or 1.64 and will send a requirement to the applicant to correct any deficiencies. If an application data sheet has been submitted, applicant may postpone the filing of the inventor’s oath or declaration until the application is in condition for allowance for applications filed on or after September 16, 2012. If an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each inventor has not been submitted at the time of allowance, a notice requiring the inventor’s oath or declaration may be sent with the Notice of Allowability. The required inventor’s oath or declaration must be submitted no later than the date on which the issue fee is paid. See 35 U.S.C. 115(f).

The Office does not check the date of execution of the oath or declaration and will not require a newly executed oath or declaration based on an oath or declaration being stale (i.e., when the date of execution is more than three months prior to the filing date of the application) or where the date of execution has been omitted. However, applicants are reminded that they have a continuing duty of disclosure under 37 CFR 1.56.

The wording of an oath or declaration should not be amended, altered or changed in any manner after it has been signed. If the wording is not correct or if all of the required affirmations have not been made, or if it has not been properly subscribed to, a new oath or declaration should be submitted. However, in some cases, a deficiency in the oath or declaration can be corrected by a supplemental paper such as an application data sheet (see 37 CFR 1.76 and MPEP § 601.05) and a new oath or declaration is not necessary. See 37 CFR 1.63(b). For example, if the oath does not set forth evidence that the notary was acting within his or her jurisdiction at the time he or she administered the oath, a certificate of the notary that the oath was taken within his or her jurisdiction will correct the deficiency. See MPEP § 602.

The inventor’s oath or declaration must include certain inventor bibliographic information (see MPEP § 602.08(a)), name the inventor or each joint inventor and except as otherwise provided be signed by each inventor (see MPEP § 602.08(b)), and identify the application to which it is directed (see MPEP § 602.08(c)). See MPEP § 602.04 for a defective foreign executed oath.

602.04 Foreign Executed Oath [R-07.2015]

37 CFR 1.66 Statements under oath.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012. See 37 CFR 1.66 (pre-AIA) for the rule otherwise in effect.]

An oath or affirmation may be made before any person within the United States authorized by law to administer oaths. An oath made in a foreign country may be made 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 shall be proved by a certificate of a diplomatic or consular officer of the United States, or by an 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. The oath shall be attested in all cases in this and other countries, by the proper official seal of the officer before whom the oath or affirmation is made. Such oath or affirmation shall be valid as to execution if it complies with the laws of the State or country where made. When the person before whom the oath or affirmation is made in this country is not provided with a seal, his official character shall be established by competent evidence, as by a certificate from a clerk of a court of record or other proper officer having a seal.

An oath executed in a foreign country must be properly authenticated.

I. HAGUE CONVENTION APOSTILLE

On October 15, 1981, the Hague "Convention Abolishing the Requirement of Legalization for Foreign Public Documents" entered into force between the United States and 28 foreign countries as parties to the Convention. Subsequently, additional countries have become parties to the Convention. The Convention applies to any document submitted to the United States Patent and Trademark Office for filing or recording, which is sworn to or acknowledged by a notary public in any one of the member countries. The Convention abolishes the certification of the authority of the notary public in a member country by a diplomatic or consular officer of the United States and substitutes certification by a special certificate, or apostille, executed by an officer of the member country.

Accordingly, the Office will accept for filing or recording a document sworn to or acknowledged before a notary public in a member country if the document bears, or has appended to it, an apostille certifying the notary’s authority. The requirement for a diplomatic or consular certificate, specified in 37 CFR 1.66, will not apply to a document sworn to or acknowledged before a notary public in a member country if an apostille is used.

A list of the current member countries that are parties to the Hague Convention can be obtained from the Internet website of the Hague Conference on Private International Law at www.hcch.net/index_en.php by selecting "Apostille Section" under "International Legal Co-operation and Litigation" and then selecting "Status table of the Apostille Convention" under "Contracting States."

The Convention prescribes the following form for the apostille:

Model of Certificate

The certificate will be in the form of a square with sides at least 9 centimeters long.

APOSTILLE
II. CERTIFICATE OF DIPLOMATIC OR CONSULAR OFFICER

When the oath is made in a foreign country not a member of the Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents, the authority of any officer other than a diplomatic or consular officer of the United States authorized to administer oaths must be proved by certificate of a diplomatic or consular officer of the United States. See 37 CFR 1.66. This proof may be through an intermediary, e.g., the consul may certify as to the authority and jurisdiction of another official who, in turn, may certify as to the authority and jurisdiction of the officer before whom the oath is taken.

Where the oath is taken before an officer in a foreign country other than a diplomatic or consular officer of the United States and whose authority is not authenticated or accompanied with an apostille certifying the notary’s authority, the application is nevertheless accepted for purposes of examination. Applicant should submit a new oath properly authenticated by an appropriate diplomatic or consular officer, the filing of proper apostille, or a declaration (37 CFR 1.68). The Office does not return improperly authenticated oaths for proper authentication.

602.05 Oath or Declaration in Continuing Applications [R-11.2013]

A copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012, even if the oath or declaration identifies the application number of the prior application. However, if such a copy of the oath or declaration is filed after the filing date of the continuation or divisional application and an application number has been assigned to the continuation or divisional application (see 37 CFR 1.5(a)), the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application. The cover letter should also indicate that the oath or declaration submitted is a copy of the oath or declaration from a prior application to avoid the oath or declaration being incorrectly matched with the prior application file. Furthermore, applicant should also label the copy of the oath or declaration with the application number of the continuation or divisional application in the event that the cover letter is separated from the copy of the oath or declaration.

A copy of the oath or declaration from a prior nonprovisional application may be filed in a continuation or divisional application even if the specification for the continuation or divisional application is different from that of the prior application, in that revisions have been made to clarify the text to incorporate amendments made in the prior application, or to make other changes provided the changes do not constitute new matter relative to the prior application. If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.

See MPEP § 602.05(a) for information regarding an oath or declaration in a continuing application filed on or after September 16, 2012. See MPEP § 602.05(b) for information regarding an oath or declaration in a continuing application filed before September 16, 2012.

602.05(a) Oath or Declaration in Continuing Applications Filed On or After September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 602.05(b) for information regarding oath or declaration in a continuing application filed before September 16, 2012.]

For applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64. See 37 CFR 1.63(d)(1). It should be noted that a copy of the inventor’s oath or declaration submitted in a continuing application filed on or after September 16, 2012 must comply with requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012. For example, the inventor’s oath or declaration must include a statement that the application was made or was authorized to be made by the person executing the oath or declaration. Accordingly, a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012.

For continuing applications filed on or after September 16, 2012 under 37 CFR 1.53(b), the inventorship is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor’s oath or declaration from the earlier-filed application, unless it is accompanied by a signed statement pursuant to 37 CFR 1.33(b) that states the name of each inventor in the continuing application. See 37 CFR 1.63(d)(2). Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with 37 CFR 1.63, except as provided in 37 CFR 1.64. See 37 CFR 1.63(d)(3).

602.05(b) Oath or Declaration in Continuing Applications Filed Before September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 602.05(a) for information regarding oath or declaration in a continuing application filed on or after September 16, 2012.]

A continuation or divisional application filed before September 16, 2012 under 37 CFR 1.53(b) (other than a continuation-in-part (CIP)) may be filed with a copy of the oath or declaration from the prior nonprovisional application. See pre-AIA 37 CFR 1.63(d)(1)(iv).

A continuation or divisional application of a prior application accorded status under pre-AIA 37 CFR 1.47 will be accorded status under pre-AIA 37 CFR 1.47 if a copy of the decision according pre-AIA 37 CFR 1.47 status in the prior application is filed in the continuation or divisional application, unless an oath or declaration signed by all of the inventors is included upon filing the continuation or divisional application. An oath or declaration in an application accorded status under pre-AIA 37 CFR 1.47 is generally not signed by all of the inventors. Accordingly, if a copy of an oath or declaration of a prior application is submitted in a continuation or divisional application filed under 37 CFR 1.53(b) and the copy of the oath or declaration omits the signature of one or more inventors, the Office of Patent Application Processing (OPAP) should send a "Notice to File Missing Parts" requiring the signature of the nonsigning inventor, unless a copy of the decision according status under pre-AIA 37 CFR 1.47 is also included at the time of filing of the continuation or divisional application. If OPAP mails such a Notice, a copy of the decision according status under pre-AIA 37 CFR 1.47, together with a surcharge under 37 CFR 1.16(f) for its late filing, will be an acceptable reply to the Notice. Alternatively, applicant may submit an oath or declaration signed by the previously nonsigning inventor together with the surcharge set forth in 37 CFR 1.16(f) in reply to the Notice.

If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(b), the continuation or divisional application may either be filed (A) with a copy of an oath or declaration from a prior application and a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application (see pre-AIA 37 CFR 1.63(d)), or (B) with a newly executed oath or declaration naming the correct inventive entity. If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(d) (continued prosecution design application), the request for filing the continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application (see 37 CFR 1.53(d)(4)).

A continuation or divisional application filed under 37 CFR 1.53(b) of a prior application in which a petition (or request) under 37 CFR 1.48 to add an inventor was filed should be filed with a copy of the executed declaration naming the correct inventive entity from the prior application or a newly executed declaration naming the correct inventive entity. A copy of any decision under 37 CFR 1.48 from the prior application is not required to be filed in the continuation or divisional application. See MPEP § 602.01(c)(3) in Revision 08.2017 of the Ninth Edition of the MPEP, published in January 2018, for the language of pre-AIA 37 CFR 1.48.

602.06 Non-English Oath or Declaration [R-08.2012]

37 CFR 1.69 Foreign language oaths and declarations.

  • (a) Whenever an individual making an oath or declaration cannot understand English, the oath or declaration must be in a language that such individual can understand and shall state that such individual understands the content of any documents to which the oath or declaration relates.
  • (b) Unless the text of any oath or declaration in a language other than English is in a form provided by the Patent and Trademark Office or in accordance with PCT Rule 4.17(iv), it must be accompanied by an English translation together with a statement that the translation is accurate, except that in the case of an oath or declaration filed under § 1.63, the translation may be filed in the Office no later than two months from the date applicant is notified to file the translation.

37 CFR 1.69 requires that oaths and declarations be in a language which is understood by the individual making the oath or declaration, i.e., a language which the individual comprehends. If the individual comprehends the English language, he or she should preferably use it. If the individual cannot comprehend the English language, any oath or declaration must be in a language which the individual can comprehend. If an individual uses a language other than English for an oath or declaration, the oath or declaration must include a statement that the individual understands the content of any documents to which the oath or declaration relates. If the documents are in a language the individual cannot comprehend, the documents may be explained to him or her so that he or she is able to understand them.

The Office will accept a single non-English language oath or declaration where there are joint inventors, of which only some understand English but all understand the non-English language of the oath or declaration.

602.07 Oath or Declaration Filed in United States as a Designated Office [R-08.2012]

See MPEP § 1893.01(e).

602.08 Inventor and Application Information [R-11.2013]

The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in 37 CFR 1.64. See MPEP § 602.01(a) for the requirements of an inventor’s oath or declaration in an application filed on or after September 16, 2012. See MPEP § 602.01(b) for the requirements of an original oath or declaration in an application filed before September 16, 2012.

The inventor’s oath or declaration must include certain inventor bibliographic information (see MPEP § 602.08(a)), name the inventor or each joint inventor and except as otherwise provided be signed by each inventor (see MPEP § 602.08(b)), and identify the application to which it is directed (see MPEP § 602.08(c)).

602.08(a) Inventor Bibliographic Information [R-10.2019]

I. INVENTOR’S CITIZENSHIP

For applications filed on or after September 16, 2012, the citizenship of the inventor is no longer required by 35 U.S.C. 115 or 37 CFR 1.63.

For nonprovisional applications filed before September 16, 2012, pre-AIA 35 U.S.C. 115 requires the inventor(s) to state his or her citizenship. Where an inventor is not a citizen of any country, a statement to this effect is accepted as satisfying the statutory requirement, but a statement as to citizenship applied for or first papers taken out looking to future citizenship in this (or any other) country does not meet the requirement.

II. INVENTOR’S RESIDENCE

Each inventor’s place of residence, that is, the city and either state or foreign country, is required to be included in the oath or declaration in a nonprovisional application for compliance with 37 CFR 1.63 unless it is included in an application data sheet (37 CFR 1.76). In the case of an inventor who is in one of the U.S. Armed Services, a statement to that effect is sufficient as to residence. For change of residence, see MPEP § 719.02. Each inventor’s residence must be included on the cover sheet for a provisional application unless it is included in an application data sheet (37 CFR 1.76).

If only a mailing address where the inventor customarily receives mail is provided, the Office will presume that the inventor’s residence is the city and either state or foreign country of the mailing address. If the inventor lives at a location which is different from the inventor’s mailing address, the inventor’s residence (city and either state or foreign country) must be included in the inventor’s oath or declaration or an application data sheet.

III. INVENTOR’S MAILING OR POST OFFICE ADDRESS

Each inventor’s mailing or post office address is required to be supplied on the oath or declaration, if not stated in an application data sheet. See 37 CFR 1.63(b), pre-AIA 37 CFR 1.63(c), and 37 CFR 1.76. If the mailing address of any inventor has been omitted, OPAP will notify applicant of the omission and require the omitted mailing address in response to the notice.

The inventor’s mailing address means that address at which he or she customarily receives his or her mail, even if it is not the main mailing address of the inventor. Either the inventor’s home or business address is acceptable as the mailing address. A post office box is also acceptable. The mailing address should include the ZIP Code designation. The object of requiring each inventor’s mailing address is to enable the Office to communicate directly with the inventor if desired; hence, the address of the attorney with instruction to send communications to the inventor in care of the attorney is not sufficient.

In situations where an inventor does not execute the oath or declaration and the inventor is not deceased or legally incapacitated, such as in an application filed on or after September 16, 2012 in which a substitute statement under 37 CFR 1.64 is filed, the inventor’s most recent home address must be given to enable the Office to communicate directly with the inventor as necessary.

602.08(b) Inventor Signature and Name [R-07.2015]

I. SIGNATURE REQUIREMENT - EXECUTION OF INVENTOR’S OATHS OR DECLARATIONS

United States patent applications which have not been prepared and executed in accordance with the requirements of Title 35 of the United States Code and Title 37 of the Code of Federal Regulations may be abandoned. Although the statute and the rules have been in existence for many years, the Office continues to receive a number of applications which have been improperly executed and/or filed. Since the improper execution and/or filing of patent applications can ultimately result in a loss of rights, it is appropriate to emphasize the importance of proper execution and filing.

There is no requirement that a signature be made in any particular manner. See MPEP § 402.03. It is permissible for an applicant to use a title of nobility or other title, such as "Dr.", in connection with his or her signature. The title will not appear in the printed patent. If applicant signs his or her name using non-English characters, then such a signature will be accepted. If the applicant is unable to write, his or her mark as affixed to the oath or declaration must be attested to by a witness. In the case of the oath, the notary’s signature to the jurat is sufficient to authenticate the mark. See MPEP § 602.

Applications filed through EFS-Web must also contain an oath or declaration personally signed by the inventor.

It is improper for an applicant to sign an oath or declaration which is not attached to or does not identify the application (e.g., a specification and drawings) to which it is directed.

Attached does not necessarily mean that all the papers must be literally fastened. It is sufficient that the specification, including the claims, and the oath or declaration are physically located together at the time of execution. Physical connection is not required. Copies of declarations are encouraged. See MPEP § 502.01, § 502.02, § 602, and § 602.05(a).

An oath or declaration under 37 CFR 1.63 by each actual inventor must be presented. Each inventor need not execute the same oath or declaration. For nonprovisional international design applications, see also 37 CFR 1.1021(d) and 1.1067. For applications filed before September 16, 2012, each oath or declaration executed by an inventor must contain a complete listing of all inventors so as to clearly indicate what each inventor believes to be the appropriate inventive entity. Where individual declarations are executed, they must be submitted as individual declarations rather than combined into one declaration (by combining the signature pages).

The provisions of 35 U.S.C. 363 for filing an international application under the Patent Cooperation Treaty (PCT) which designates the United States and thereby has the effect of a regularly filed United States national application, except as provided in pre-AIA 35 U.S.C. 102(e), are somewhat different than the provisions of 35 U.S.C. 111. The oath or declaration requirements for an international application before the Patent and Trademark Office are set forth in 35 U.S.C. 371(c)(4) and 37 CFR 1.497.

37 CFR 1.52(c) states that "[i]nterlineation, erasure, cancellation, or other alteration of the application papers may be made before or after the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers. A substitute specification (§ 1.125) may be required if the application papers do not comply with paragraphs (a) and (b) of this section."

An inventor is not required to re-execute a new inventor’s oath or declaration after alteration of the application papers provided that the changes are minor, for example, correction of typographical errors, grammatical problems, and clarifying sentences. If the changes would amount to the introduction of new matter had the change been made to a filed application, however, then the inventor should execute a new oath or declaration after reviewing the amended application. The rule permits alterations to the specification without the inventor re-executing an oath or declaration only where the statements in the executed declaration remain applicable. Additionally, an inventor must before executing the oath or declaration (i) review and understand the contents of the application; and (ii) be aware of his or her duty of disclosure. See 37 CFR 1.63(c). If the changes made to the specification before an application is filed result in substantial alterations to the application, then an inventor may not understand the contents of the application or be aware of his/her duty to disclose information relating to the substantial alteration.

The signing and execution by the applicant of oaths or declarations in certain continuation or divisional applications may be omitted. See MPEP § 201.06, § 201.07, and § 602.05(a). For the signature on a reply, see MPEP §§ 714.01(a), 714.01(c), and 714.01(d).

II. SIGNATURE REQUIREMENT - EXECUTION OF OATH OR DECLARATION ON BEHALF OF INVENTOR

A.For applications filed on or after September 16, 2012

The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided under 37 CFR 1.64. Only inventors can execute an oath or declaration under 37 CFR 1.63. The applicant for patent may execute a substitute statement under 37 CFR 1.64 in lieu of an oath or declaration under the permitted circumstances. For information on the execution of a substitute statement, see MPEP § 604.

B.For applications filed before September 16, 2012

The oath or declaration required by pre-AIA 35 U.S.C. 115 must be signed by all of the actual inventors, except under limited circumstances. 35 U.S.C. 116 provides that joint inventors can sign on behalf of an inventor who cannot be reached or refuses to join. See MPEP § 409.03(a). 35 U.S.C. 117 provides that the legal representative of a deceased or incapacitated inventor can sign on behalf of the inventor. If a legal representative executes an oath or declaration on behalf of a deceased inventor, the legal representative must state that the person is a legal representative and provide the citizenship, residence, and mailing address of the legal representative. See pre-AIA 37 CFR 1.64 and MPEP § 409.01(b). Pre-AIA 35 U.S.C. 118 provides that a party with proprietary interest in the invention claimed in an application can sign on behalf of the inventor, if the inventor cannot be reached or refuses to join in the filing of the application. See MPEP § 409.03(b) and § 409.03(f). The oath or declaration may not be signed by an attorney on behalf of the inventor, even if the attorney has been given a power of attorney to do so. Opinion of Hon. Edward Bates, 10 Op. Atty. Gen. 137 (1861). See also Staeger v. Commissioner of Patents and Trademarks, 189 USPQ 272 (D.D.C. 1976) and In re Striker, 182 USPQ 507 (PTO Solicitor 1973) (In each case, an oath or declaration signed by the attorney on behalf of the inventor was defective because the attorney did not have a proprietary interest in the invention.).

III. INVENTOR’S NAME

For nonprovisional applications filed on or after September 16, 2012, 37 CFR 1.63 requires the identification of the inventor by his or her legal name. 37 CFR 1.63(a)(1) simplifies the requirement for the inventor’s name to be his or her legal name and no longer refers to a family or given name. The requirement for an inventor’s legal name is sufficient, given that individuals do not always have both a family name and a given name, or have varying understandings of what a "given" name requires.

For nonprovisional applications filed before September 16, 2012, pre-AIA 37 CFR 1.63(a)(2) requires that each inventor be identified by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial in the oath or declaration. For example, if the applicant's full name is "John Paul Doe," either "John P. Doe" or "J. Paul Doe" is acceptable. A situation may arise where an inventor’s full given name is a singular letter, or is a plurality of singular letters. For example, an inventor’s full given name may be "J. Doe" or "J.P. Doe," i.e., the "J" and the "P" are not initials. In such a situation, identifying the inventor by his or her family name and the singular letter(s) is acceptable, since that is the inventor’s full given name. In order to avoid an objection under 37 CFR 1.63(a)(2), applicant should point out in the oath or declaration that the singular lettering set forth is the inventor’s given name. A statement to this effect, accompanying the filing of the oath or declaration, will also be acceptable.

A.Correction of Name

In an application where the name is typewritten with a middle name or initial, but the signature does not contain such middle name or initial, the typewritten version of the name will be used as the inventor’s name for the purposes of the application and any patent that may issue from the application. No objection should be made in this instance, since the inventor’s signature may differ from his or her legal name. Effective September 16, 2012, any request to have the name of the inventor or a joint inventor in a nonprovisional application corrected or updated, including correction of a typographical or transliteration error in the spelling of an inventor’s name, must be by way of a request under 37 CFR 1.48(f). A request under 37 CFR 1.48(f) must include (1) an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name, and (2) the processing fee set forth in 37 CFR 1.17(i). Requests under 37 CFR 1.48(f) filed on or after September 16, 2012, are treated by the Office of Patent Application Processing (OPAP). If the request complies with 37 CFR 1.48(f), OPAP will correct the Office records and send a corrected filing receipt.

If the error in the inventor’s name is not detected until after the payment of the issue fee, because amendments are not permitted after the payment of the issue fee, either (A) the application must be withdrawn from issue under 37 CFR 1.313(c)(2) and a request under 37 CFR 1.48(f) to correct the inventor’s name submitted with a request for continued examination (RCE) under 37 CFR 1.114, or (B) a certificate of correction, along with a petition under 37 CFR 1.182, must be filed after the patent issues requesting correction of inventor’s name.

Effective September 16, 2012, any request to correct or change inventorship, or correct or update the name of the inventor or a joint inventor, in a provisional application must be made pursuant to 37 CFR 1.48(d). 37 CFR 1.48(d) requires a request signed by a party set forth in 37 CFR 1.33(b), that identifies each inventor by his or her legal name, and the processing fee set forth in 37 CFR 1.17(q). OPAP treats requests under 37 CFR 1.48(d) and will correct the Office records and send a corrected filing receipt if the request complies with 37 CFR 1.48(d).

B.Change of Name

Effective September 16, 2012, when an inventor’s name has been changed after the nonprovisional application has been filed and the inventor desires to change his or her name on the application, he or she must submit a request under 37 CFR 1.48(f), including an application data sheet in accordance with 37 CFR 1.76, that identifies each inventor by his or her legal name and the processing fee set forth in 37 CFR 1.17(i). The corrected application data sheet must identify the information being changed as required by 37 CFR 1.76(c)(2). The Office of Patent Application Processing (OPAP) treats requests under 37 CFR 1.48(f) and will correct the Office records and send a corrected filing receipt if the request complies with 37 CFR 1.48(f).Since amendments are not permitted after the payment of the issue fee (37 CFR 1.312), a request under 37 CFR 1.48(f) to change the name of the inventor cannot be granted if filed after the payment of the issue fee.

If the application is assigned, applicant should submit a corrected assignment document along with a cover sheet and the recording fee as set forth in 37 CFR 1.21(h) to the Assignment Division for a change in the assignment record.

C.Order of Joint Inventor Names

For applications filed on or after September 16, 2012, the order of names of joint patentees in the heading of the patent is taken from the order in which the names appear in the application data sheet if submitted before or with the inventor’s oath or declaration. For applications filed before September 16, 2012, the order of names of joint patentees in the heading of the patent is taken from the order in which the typewritten names appear in the original oath or declaration. Care should therefore be exercised in selecting the preferred order of the typewritten names of the joint inventors, before filing, as requests for subsequent shifting of the names would entail changing numerous records in the Office.

Because the particular order in which the names appear is of no consequence insofar as the legal rights of the joint inventors are concerned, no changes will be made except when a request under 37 CFR 1.48(f) (filed on or after September 16, 2012) is granted. It is suggested that all typewritten and signed names appearing in the application papers should be in the same order as the typewritten names in the oath or declaration. The Office of Patent Application Processing (OPAP) treats requests under 37 CFR 1.48(f) and if the request is granted OPAP will change the order of the names in the Office computer records and send a corrected filing receipt. Because a change to the order of names of joint inventors is an amendment to the application and amendments are not permitted after the payment of the issue fee (37 CFR 1.312), a request under 37 CFR 1.48(f) to change the order of the names of joint inventors cannot be granted if filed after the payment of the issue fee.

In those instances where the joint inventors file separate oaths or declarations in an application filed before September 16, 2012, the order of names is taken from the order in which the several oaths or declarations appear in the application papers unless a different order is requested at the time of filing or a request under 37 CFR 1.48(f) is granted. For applications filed on or after September 16, 2012, the order of inventors is taken from an application data sheet in accordance with 37 CFR 1.76 if filed before or with the inventor’s oath or declaration unless a request under 37 CFR 1.48(f) is granted. A request under 37 CFR 1.48(f) may be filed on or after September 16, 2012 to change the order of the names of joint inventors in a nonprovisional application regardless of the filing date of the application.

602.08(c) Identification of Application [R-07.2015]

37 CFR 1.63 requires that an oath or declaration identify the application (e.g., specification and drawings) to which it is directed.

The following combination of information supplied in an oath or declaration filed on the application filing date with a specification are acceptable as minimums for identifying the application and compliance with any one of the items below will be accepted as complying with the identification requirement of 37 CFR 1.63:

  • (A) name of inventor(s), and reference to an attached specification or application which is both attached to the oath or declaration at the time of execution and submitted with the oath or declaration on filing;
  • (B) name of inventor(s), and attorney docket number which was on the specification as filed; or
  • (C) name of inventor(s), and title of the invention which was on the specification as filed.

Filing dates are granted on applications filed without an inventor’s oath or declaration in compliance with 37 CFR 1.63. The following combinations of information supplied in an oath or declaration filed after the filing date of the application are acceptable as minimums for identifying the application and compliance with any one of the items below will be accepted as complying with the identification requirement of 37 CFR 1.63:

  • (A) application number (consisting of the series code and the serial number, e.g., 08/123,456);
  • (B) serial number and filing date;
  • (C) international application number of an international application;
  • (D) international registration number of an international design application;
  • (E) attorney docket number which was on the specification as filed;
  • (F) title of the invention which was on the specification as filed and reference to an attached specification or application which is both attached to the oath or declaration at the time of execution and submitted with the oath or declaration; or
  • (G) title of the invention which was on the specification as filed and accompanied by a cover letter accurately identifying the application for which it was intended by either the application number (consisting of the series code and the serial number, e.g., 08/123,456), or serial number and filing date. Absent any statement(s) to the contrary, it will be presumed that the application filed in the USPTO is the application which the inventor(s) executed by signing the oath or declaration.

Any specification that is filed attached to an oath or declaration on a date later than the application filing date will not be compared with the specification submitted on filing. Absent any statement(s) to the contrary, the "attached" specification will be presumed to be a copy of the specification and any amendments thereto, which were filed in the USPTO in order to obtain a filing date for the application.

Any variance from the above guidelines will only be considered upon the filing of a petition for waiver of the rules under 37 CFR 1.183 accompanied by a petition fee (37 CFR 1.17(f)).

Further an oath or declaration attached to a cover letter referencing an incorrect application may not become associated with the correct application and, therefore, could result in the abandonment of the correct application.

See MPEP § 1896 for the identification requirements for a declaration filed in a U.S. national stage application filed under 35 U.S.C. 371.

602.09 Joint Inventors [R-10.2019]

35 U.S.C. 116  Inventors.

[Editor Note: Applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 116 (pre-AIA) for the law otherwise applicable.]

  • (a) JOINT INVENTIONS.—When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
  • (b) OMITTED INVENTOR.—If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.
  • (c) CORRECTION OF ERRORS IN APPLICATION.—Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, the Director may permit the application to be amended accordingly, under such terms as he prescribes.

35 U.S.C. 116 (pre-AIA)  Inventors.

[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 116 for the law otherwise applicable.]

When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.

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37 CFR 1.45 Joint inventors.

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  • (b) Inventors may apply for a patent jointly even though:
    • (1) They did not physically work together or at the same time;
    • (2) Each inventor did not make the same type or amount of contribution; or
    • (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
  • (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.

Joint inventors do not have to separately "sign the application," but only need apply for the patent jointly and make the required oath or declaration in a nonprovisional application by signing the same. See MPEP §§ 602.01(a) and 602.01(b).

Because provisional applications may be filed without claims, 37 CFR 1.45(c) states that each inventor named in a joint provisional application must have made a contribution to the subject matter disclosed in the application.

35 U.S.C. 116 recognizes the realities of modern team research. A research project may include many inventions. Some inventions may have contributions made by individuals who are not involved in other, related inventions.

35 U.S.C. 116 (and 37 CFR 1.45) allows inventors to apply for a patent jointly even though

  • (A) they did not physically work together or at the same time,
  • (B) each did not make the same type or amount of contribution, or
  • (C) each did not make a contribution to the subject matter of every claim of the patent.

See MPEP § 2109.01 for a discussion of the legal requirements for joint inventorship.

Applicants are responsible for correcting, and are required to correct, the inventorship in compliance with 37 CFR 1.48 when the application is amended to change the claims so that one (or more) of the named inventors is no longer an inventor of the subject matter of a claim remaining in the application. Requests under 37 CFR 1.48 filed on or after September 16, 2012 (regardless of the application filing date) are treated by OPAP. If the request is granted, OPAP will correct the Office records and send a corrected filing receipt.

Like other patent applications, jointly filed applications are subject to the requirements of 35 U.S.C. 121 that an application be directed to only a single invention. If an application by joint inventors includes more than one independent and distinct invention, restriction may be required with the possible result of a necessity to change the inventorship named in the application if the elected invention was not the invention of all the originally named inventors. In such a case, a "divisional" application complying with 35 U.S.C. 120 would be entitled to the benefit of the earlier filing date of the original application. In requiring restriction in an application filed by joint inventors, the examiner should remind applicants of the necessity to correct the inventorship pursuant to 37 CFR 1.48 if an invention is elected and the claims to the invention of one or more inventors are canceled.

35 U.S.C. 116 increases the likelihood that different claims of an application or patent may have different dates of invention even though the patent covers only one independent and distinct invention within the meaning of 35 U.S.C. 121. The examiner should not inquire of the patent applicant concerning the inventors and the invention dates for the subject matter of the various claims until it becomes necessary to do so in order to properly examine the application. If an application is filed with joint inventors, the examiner should assume that the subject matter of the various claims was commonly owned at the time the inventions covered therein were made, unless there is evidence to the contrary. When necessary, the U.S. Patent and Trademark Office or a court may inquire of the patent applicant or owner the inventorship or ownership of each claimed invention on its effective filing date, or on its date of invention, as applicable. 37 CFR 1.110. Pending nonprovisional applications will be permitted to be amended by complying with 37 CFR 1.48 to add claims to inventions by inventors not named when the application was filed as long as such inventions were disclosed in the application as filed since 37 CFR 1.48 permits correction of inventorship where the correct inventor or inventors are not named in an application for patent.

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Last Modified: 06/25/2020 18:23:05