Resolution of inconsistent information supplied by both an application data sheet and other documents (e.g., the oath or declaration under pre-AIA 37 CFR 1.63 , or pre-AIA 37 CFR 1.67 ) are addressed in pre-AIA 37 CFR 1.76 (d). If an ADS is inconsistent with the information provided in another document that was submitted at the same time or previous to the ADS submission, the ADS will control. Pre-AIA 37 CFR 1.76(d)(1) provides that the latest submitted information will govern notwithstanding whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by an oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67, except as provided by pre-AIA 37 CFR 1.76(d)(3). This is because the application data sheet is intended as the means by which applicants will provide most information to the Office. In the small number of instances where another document has more accurate information than a concurrently supplied application data sheet (37 CFR 1.76(d)(2) ), a supplemental application data sheet should be submitted to conform the information presented by the supplemental application data sheet with the correct information in the other document(s) (pre-AIA 37 CFR 1.76(d)(1) ). The information in the application data sheet will also govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form.
If an application is filed with an application data sheet improperly identifying the residence of one of the inventors, inventor B, and an executed pre-AIA 37 CFR 1.63 declaration setting forth the correct but different residence of inventor B, the Office will capture the residence of inventor B found in the application data sheet as the residence of B, and include that information in the filing receipt. If applicant desires correction of the residence, applicant should submit a supplemental application data sheet under pre-AIA 37 CFR 1.76(c), with the name of inventor B and the corrected residence for inventor B.
Pursuant to pre-AIA 37 CFR 1.76(d)(3), the oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67 governs inconsistencies with the application data sheet in the naming of inventors and setting forth their citizenship. If different inventors are listed in the application data sheet than are named in the oath or declaration for the application, the inventors, named in the oath or declaration, are considered to be the inventors named in the patent application. See pre-AIA 37 CFR 1.76(d)(3). Any change in the inventorship set forth in the oath or declaration under pre-AIA 37 CFR 1.63 must be by way of a request under AIA 37 CFR 1.48(a) notwithstanding identification of the correct inventive entity in an application data sheet or supplemental application data sheet. Similarly, if the oath or declaration under pre-AIA 37 CFR 1.63 incorrectly sets forth the citizenship of one of the inventors, that inventor must submit a supplemental oath or declaration under pre-AIA 37 CFR 1.67 with the correct citizenship notwithstanding the correct identification of the citizenship in an application data sheet or supplemental application data sheet. If the spelling of the inventor’s name is incorrect, a request under 37 CFR 1.48(f) is required. See MPEP §§ 602.01(c)(2) and 602.08(b).
The Office will rely upon information supplied in the application data sheet over an oath or declaration to capture the data even where the type of information supplied (citizenship, inventorship) is governed by the oath or declaration according to statute (pre-AIA 35 U.S.C. 115 ) or other rule (pre-AIA 37 CFR 1.41(a)(1) ). Where the oath or declaration under 37 CFR 1.63 or pre-AIA 37 CFR 1.67 contains the correct information regarding inventors or their citizenship and the application data sheet does not, even though the oath or declaration governs pursuant to pre-AIA 37 CFR 1.76(d)(3), the information in the application data sheet must be corrected by submission of a request for correction and a supplemental application data sheet. If the spelling of the inventor’s name is incorrect, a request under 37 CFR 1.48(f) is required. See MPEP §§ 602.01(c)(2) and 602.08(b).
If an application is filed with an application data sheet correctly setting forth the citizenship of inventor B, and an executed pre-AIA 37 CFR 1.63 declaration setting forth a different incorrect citizenship of inventor B, the Office will capture the citizenship of inventor B found in the application data sheet. Applicant, however, must submit a supplemental oath or declaration under pre-AIA 37 CFR 1.67 by inventor B setting forth the correct citizenship even though it appears correctly in the application data sheet. A supplemental application data sheet cannot be used to correct the citizenship error in the oath or declaration. If, however, the error is one of residence, no change would be required (pre-AIA 37 CFR 1.76(d)(2) ).
As to the submission of class/subclass information in the application data sheet, the Office notes that there is a distinction between permitting applicants to aid in the identification of the appropriate Art Unit to examine the application and requiring the Office to always honor such identification/request, which could lead to misuse by some applicants of forum shopping. Even when an applicant’s identification of an Art Unit is appropriate, internal staffing/workload requirements may dictate that the application be handled by another Art Unit qualified to do so, particularly when the art or claims encompass the areas of expertise of more than one Art Unit.
If the applicant is not an inventor, the applicant information should also include the applicant’s authority to apply for the patent on behalf of the inventor (see pre-AIA 37 CFR 1.42, 1.43 and 1.47 ). For example, if the inventor is deceased or legally incapacitated, the applicant should include "Legal Representative" as the authority. Similarly, if a petition under pre-AIA 37 CFR 1.47(b) is filed, the applicant’s authority would be "Party in Interest under 35 U.S.C. 118." If the application is filed by the Administrator of NASA, the applicant’s authority would be "Government Property Interest."
The correspondence information may be indicated by reference to a Customer Number to which correspondence is to be directed.
Effective December 18, 2013 for all applications no matter when filed, 37 CFR 1.76 was amended by adding new paragraphs (f) and (g) to permit the use of Patent Law Treaty Model International Forms as appropriate or the Patent Cooperation Treaty Request Form in lieu of an application data sheet under 37 CFR 1.76. See MPEP § 601.05(a), subsection IV, for more information.
· (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 ).
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).
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 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.
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.
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.
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)."
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.
[Editor Note: See subsection II., below, for naming inventorship in applications filed before September 16, 2012.]
· (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.
[Editor Note: See subsection I., above, for naming inventorship in applications filed on or after September 16, 2012.]
· (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.
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.
[Editor Note: See MPEP § 602.01(b) for information pertaining to an inventor's oath or declaration in applications filed before September 16, 2012.]
· (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.
· (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.
