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.
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.
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 USPTO patent electronic filing system filing of application papers, the USPTO patent electronic filing system does not accept assignments for recording purposes when filing an application. Assignments submitted via the USPTO patent electronic filing system 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.
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.
Forms PTO/AIA/01 through PTO/AIA/11 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/PatentForms.
[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.]
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).
· (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 or declarant is a joint inventor together with each of the other inventors indicating them by name. This may be done by stating that the affiant or declarant does verily believe that the affiant or declarant is 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 § 602.08 et 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 through PTO/SB/04 may be used when submitting the inventor’s oath or declaration in an application filed before September 16, 2012, which are available on the USPTO website at www.uspto.gov/patents/apply/forms/forms.
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.
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).
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.
Example:
The parent application names inventors A and B and claims inventions 1 and 2. Inventor A contributes only to invention 1 and inventor B contributes only to invention 2. A restriction requirement was made and invention 1 was elected. Upon allowance of claims directed to invention 1 and cancellation of claims directed to invention 2, a request under 37 CFR 1.48(a) was filed requesting deletion of inventor B. The request under 37 CFR 1.48(a) was granted by OPAP. Prior to issuance of the parent application, a divisional application claiming benefit under 35 U.S.C. 120 to the parent application is filed claiming only invention 2 and naming only inventor B. The inventorship overlap required by 35 U.S.C. 120 is met in this instance even though at the time of filing of the divisional application the inventorship overlap was lost as a result of the deletion of an inventor in the parent application. The overlap of inventorship need not be present on the date the continuing application is filed nor present when the parent application issues or becomes abandoned.
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.
[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.]
· (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.
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Requests for correction of inventorship under 37 CFR 1.48 filed on or after September 16, 2012 are handled by the Office of Patent Application Processing (OPAP).
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).
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).
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.
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 their 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.
Where an inventorship error in a provisional application is desired to be corrected after expiration of twelve months from the filing date of the provisional application, a request under 37 CFR 1.48(d) may still be filed with OPAP.
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/PatentForms.
[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.]
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· (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 § 1.76 that identifies each inventor by his or her legal name in the desired order; and
· (2) The processing fee set forth in § 1.17(i).
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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.
The procedures for correction of inventorship and for correction to the name of an inventor or to the order of the names of the inventors are not distinct. 37 CFR 1.48(f) permits an applicant to change or update a particular inventor’s name if their 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 their 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).
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.
Examiners are not 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 their jurisdiction at the time the oath is administered the oath, a certificate of the notary that the oath was taken within their 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.
[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.
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/en/ instruments /conventions / status-table/?cid=41.
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.
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
