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.
· (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.
See MPEP § 1893.01(e).
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)).
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.
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.
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.
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 their signature. The title will not appear in the printed patent. If applicant signs their name using non-English characters, then such a signature will be accepted. If the applicant is unable to write, their 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 the USPTO patent electronic filing system 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 their 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 their 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).
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.
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.).
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 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.
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 their legal name. 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 their 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.
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 their 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).
When an inventor’s name has been changed after the nonprovisional application has been filed and the inventor desires to change their name on the application, they 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 their 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.
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.
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.
[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.
[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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· (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.
[Editor Note: See subsection II., below, for information regarding supplemental oath or declaration in an application filed before September 16, 2012.]
· (a) The applicant may submit an inventor's oath or declaration meeting the requirements of § 1.63, § 1.64, or § 1.162 to correct any deficiencies or inaccuracies present in an earlier-filed inventor's oath or declaration. Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(b) in an oath or declaration may be corrected with an application data sheet in accordance with § 1.76, except that any correction of inventorship must be pursuant to § 1.48.
· (b) A supplemental inventor's oath or declaration under this section must be executed by the person whose inventor’s oath or declaration is being withdrawn, replaced, or otherwise corrected.
· (c) The Office will not require a person who has executed an oath or declaration in compliance with 35 U.S.C. 115 and § 1.63 or 1.162 for an application to provide an additional inventor's oath or declaration for the application.
· (d) No new matter may be introduced into a nonprovisional application after its filing date even if an inventor's oath or declaration is filed to correct deficiencies or inaccuracies present in the earlier-filed inventor's oath or declaration.
37 CFR 1.67 provides for a supplemental inventor’s oath or declaration (which includes oaths, declarations, assignment-statements under 37 CFR 1.63(e), and substitute statements under 37 CFR 1.64 ) under 35 U.S.C. 115(h).
37 CFR 1.67(a) provides that the applicant may submit an inventor’s oath or declaration meeting the requirements of 37 CFR 1.63, 1.64, or 1.162 to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration. See 35 U.S.C. 115(h)(1). 37 CFR 1.67(a) also provides that deficiencies or inaccuracies due to the failure to meet the requirements of 37 CFR 1.63(b) in an oath or declaration may be corrected with an application data sheet in accordance with 37 CFR 1.76, except that any correction of inventorship must be pursuant to 37 CFR 1.48. Thus, an error in an inventor’s mailing address may be corrected with an application data sheet in accordance with 37 CFR 1.76. See 37 CFR 1.76(c). Any request to correct or change inventorship in a nonprovisional application must be by way of a request under 37 CFR 1.48(a). Any request to correct or update the name of an inventor in a nonprovisional application must be by way of a request under 37 CFR 1.48(f).
37 CFR 1.67(b) provides that a supplemental inventor’s oath or declaration under 37 CFR 1.67 must be executed by the person whose inventor’s oath or declaration is being withdrawn, replaced, or otherwise corrected.
37 CFR 1.67(c) provides that the Office will not require a person who has executed an oath or declaration in compliance with 35 U.S.C. 115 and 37 CFR 1.63 or 1.162 for an application to provide an additional inventor’s oath or declaration for the application. See 35 U.S.C. 115(h)(2).
37 CFR 1.67(d) contains the provision of former 37 CFR 1.67(b) that no new matter may be introduced into a nonprovisional application after its filing date even if an inventor’s oath or declaration is filed to correct deficiencies or inaccuracies present in the earlier-filed oath or declaration.
[Editor Note: See subsection I., above, for information regarding supplemental oath or declaration in an application filed on or after September 16, 2012.]
· (a) The Office may require, or inventors and applicants may submit, a supplemental oath or declaration meeting the requirements of § 1.63 or § 1.162 to correct any deficiencies or inaccuracies present in the earlier filed oath or declaration.
· (1) Deficiencies or inaccuracies relating to all the inventors or applicants (§§ 1.42, 1.43, or § 1.47 ) may be corrected with a supplemental oath or declaration signed by all the inventors or applicants.
· (2) Deficiencies or inaccuracies relating to fewer than all of the inventor(s) or applicant(s) (§§ 1.42, 1.43 or § 1.47 ) may be corrected with a supplemental oath or declaration identifying the entire inventive entity but signed only by the inventor(s) or applicant(s) to whom the error or deficiency relates.
· (3) Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(c) (e.g., to correct the omission of a mailing address of an inventor) in an oath or declaration may be corrected with an application data sheet in accordance with § 1.76.
· (4) Submission of a supplemental oath or declaration or an application data sheet (§ 1.76 ), as opposed to who must sign the supplemental oath or declaration or an application data sheet, is governed by § 1.33(a)(2) and paragraph (b) of this section.
· (b) A supplemental oath or declaration meeting the requirements of § 1.63 must be filed when a claim is presented for matter originally shown or described but not substantially embraced in the statement of invention or claims originally presented or when an oath or declaration submitted in accordance with § 1.53(f) after the filing of the specification and any required drawings specifically and improperly refers to an amendment which includes new matter. No new matter may be introduced into a nonprovisional application after its filing date even if a supplemental oath or declaration is filed. In proper situations, the oath or declaration here required may be made on information and belief by an applicant other than the inventor.
· (c) [Reserved]
Pre-AIA 37 CFR 1.67 requires in the supplemental oath or declaration substantially all the data called for in pre-AIA 37 CFR 1.63 for the original oath or declaration. As to the purpose to be served by the supplemental oath or declaration, the examiner should bear in mind that it cannot be availed of to introduce new matter into an application.
Deficiencies or inaccuracies in an oath or declaration may be corrected by a supplemental oath or declaration. The supplemental oath or declaration must (1) identify the entire inventive entity, and (2) be signed by all the inventors when the correction relates to all the inventors or applicants (pre-AIA 37 CFR 1.42, 1.43, or 1.47 ), or by only those inventor(s) or applicants (pre-AIA 37 CFR 1.42, 1.43, or 1.47 ) to whom the corrections relates. See pre-AIA 37 CFR 1.67(a). A deficiency or inaccuracy relating to information required by pre-AIA 37 CFR 1.63(c) may also be corrected with an application data sheet (pre-AIA 37 CFR 1.67(a)(3) ). The following examples illustrate how certain deficiencies or inaccuracies in an oath or declaration may be corrected:
Example 1: An application was filed with a declaration under pre-AIA 37 CFR 1.63 executed by inventors A, B, and C. If it is later determined that the citizenship of inventor C was in error, a supplemental declaration identifying inventors A, B, and C may be signed by inventor C alone correcting C’s citizenship.
Example 2: An application was filed with a declaration under pre-AIA 37 CFR 1.63 executed by inventors A, B, and C. If it is later determined that the duty to disclose clause was omitted, a supplemental declaration identifying inventors A, B, and C must be signed by inventors A, B, and C. If separate declarations had been executed by each of the inventors and the duty to disclose clause had been omitted only in the declaration by inventor B, then only inventor B would need to execute a supplemental declaration identifying the entire inventive entity.
Example 3: An application was filed with a declaration under pre-AIA 37 CFR 1.63 executed by inventors A, and B, and the legal representative of deceased inventor C. It is later determined that an error was made in the citizenship of deceased inventor C. A supplemental declaration identifying A, B, and C as the inventors would be required to be signed by the legal representative of deceased inventor C alone correcting C’s citizenship.
Example 4: An application was filed with a declaration under pre-AIA 37 CFR
