Inventors Oath Overview

Objectives to know about Inventors Oath specific to the AIA

• Understand the AIA’s requirements for an inventor’s oath or declaration.
• Identify the key laws and rules (37 CFR and 35 USC) pertaining to the inventor’s oath or declaration specific to the AIA.
• Apply the laws and rules pertaining to the inventor’s oath or declaration specific to the AIA to real-world scenarios.

Key Laws and Rules (37 CFR and 35 USC) pertaining to Inventors Oath specific to the AIA

• 35 U.S.C. § 115: Oath or declaration
• 37 CFR § 1.63: Oath or declaration

Comprehensive, detailed, e-learning module content for Inventors Oath specific to the AIA

Module 1: Introduction to the Inventor’s Oath or Declaration

This module will introduce the inventor’s oath or declaration. It will discuss the purpose of the inventor’s oath or declaration, the requirements for the inventor’s oath or declaration, and the consequences of failing to file a proper inventor’s oath or declaration.

Purpose of the inventor’s oath or declaration

The purpose of the inventor’s oath or declaration is to verify that the inventor named in the patent application is the actual inventor of the claimed invention. The inventor’s oath or declaration also serves as a deterrent to fraud and perjury.

Requirements for the inventor’s oath or declaration

The inventor’s oath or declaration must be signed by each inventor named in the patent application. The oath or declaration must state that the inventor believes himself or herself to be the original inventor of the claimed invention and that the inventor has not assigned or granted any interest in the invention to another person.

Consequences of failing to file a proper inventor’s oath or declaration

If a proper inventor’s oath or declaration is not filed, the patent application may be abandoned or the patent may be invalidated.

Module 2: Applying the laws and rules pertaining to the Inventor’s Oath or Declaration specific to the AIA to real-world scenarios

This module will discuss how to apply the laws and rules pertaining to the inventor’s oath or declaration specific to the AIA to real-world scenarios. It will cover common issues that arise in connection with the inventor’s oath or declaration and how to address those issues.

Common issues

Some common issues that arise in connection with the inventor’s oath or declaration include:

• Whether the inventor’s oath or declaration is signed by all of the inventors named in the patent application
• Whether the inventor’s oath or declaration contains all of the required statements
• Whether the inventor’s oath or declaration is filed in a timely manner

Section 4 of the America Invents Act amends 35 U.S.C. §§ 115 and 118. This affects requirements regarding the inventor’s oath or declaration. These changes are quite substantial and reflect Congress’s intent to modify the patent process from a first-to-invent system to a first-inventor-to-file system.

First, the America Invents Act amended 35 U.S.C. § 115 to explicitly provide for an inventor’s declaration to be submitted in place of an inventor’s oath. This change is mainly for clarification, for 35 U.S.C. § 25 gave the Director the authority to allow an inventor’s declaration in lieu of an oath. Second, the inventor is no longer required to state his/her country of citizenship or that he/she believes himself/herself to be the first inventor. Third, if the inventor is deceased, under legal incapacity, or cannot be found or reached after diligent effort, or the inventor is under an obligation to assign the invention but has refused to make the oath or declaration, the new provision allows for the applicant to provide a substitute statement explaining the situation in lieu of the inventor’s oath or declaration.

The America Invents Act allows for examination to take place without the submission of the inventor’s oath or declaration and provides the Office with the authority to delay the required submission of the inventor’s oath or declaration. The Office, however, has indicated it will not exercise this authority and will still require the inventor’s oath or declaration to be submitted before examination of the patent application. The Office feels the inventor’s oath or declaration is needed before examination so that 35 U.S.C. § 102 issues, such as prior use or sale, can be adequately considered. Also, true inventorship needs to be established before a rejection based on double patenting can be issued.

The America Invents Act allows a non-inventor to file an application if the invention is assigned to him/her, the inventor is under an obligation to assign the invention, or the non-inventor shows sufficient proprietary interest. No proof the inventor refused to execute or was unable to be reached will be required (as was the case before the AIA), but an inventor’s oath or declaration (or a substitute statement) will still be required. One final change regarding inventorship allows the Office to grant a patent to the “real party in interest” when the application is filed by a person other than the inventor.

Key Dates

Section 4 became effective on September 16, 2012, and applies to any patent applications filed on or after that date. The USPTO published the final rules on August 14, 2012.

Inventor’s Oath or Declaration: Final Rules

• Statutory provision and final rules aim to:

– streamline patent application filing;

– simplify the content requirements for an oath/declaration; and

– offer flexibility on the timing for filing an oath/declaration

Inventor’s Oath/Declaration:

Dates

• Effective Date: September 16, 2012

• Applicability: Applications filed on or after September 16, 2012

Applicant Under 35 U.S.C. 118

• Permits an assignee, person to whom there is an obligation to assign, or person with a sufficient proprietary interest in the claimed invention to be the applicant

• Term “applicant” is no longer synonymous with the inventor

• Each inventor must still execute an oath or declaration

The Applicant

• Applicant may be the person:

– To whom the inventor has assigned;

– To whom the inventor is under an obligation to assign (obligated assignee); and

– Who otherwise shows sufficient proprietary interest in the matter

• Applicant may also be:

– Legal representative of a deceased or incapacitated inventor; or

– Remaining joint inventor(s) if a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort

Name of the Inventor

• Application must include or be amended to include the name of the inventor for any invention claimed in the application

• Inventor may be named by:

– signed application data sheet (ADS) filed before or with an executed inventor’s oath/declaration; or

– executed inventor’s oath/declaration

Application Data Sheet (ADS)

Requirement

• ADS is required for:

– assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest to be considered the applicant in an application (except national stage applications);

– claim for foreign priority (except national stage applications); and

– claim for domestic benefit

Application Data Sheet: Benefits

• Use of an ADS permits:

– each oath/declaration to identify only the inventor executing the oath/declaration and not the entire inventive entity; and

– filing of the inventor’s oath/declaration to be postponed until the application is otherwise in condition for allowance

35 U.S.C. 115

• 35 U.S.C. 115 requires for each inventor:

– Oath/declaration executed by the inventor;

– Substitute statement with respect to the inventor; or

– Assignment that contains the statements required for an oath/declaration by the inventor

• Phrase “inventor’s oath or declaration” in the rules means an oath, declaration, an assignment-statement, or substitute statement

Inventor’s Oath or Declaration:

Statutory Requirements

• Inventor must state in oath/declaration that:

– application was made or was authorized to be made by the person executing the oath/declaration; and

– person executing the oath/declaration believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application

Inventor’s Oath or Declaration:

Rule Requirements

• Inventor must identify in oath/declaration:

– application to which it is directed; and

– person executing the oath/declaration by his or her legal name

Substitute Statements

• Non-inventor applicant may file a substitute statement if an inventor:

– is deceased;

– is legally incapacitated;

– cannot be found or reached after diligent effort; or

– refuses to execute an oath or declaration

Substitute Statements Requirements

• Must contain the statements and information required for an oath/declaration;

• Identify the inventor with respect to whom the statement applies;

• Identify the person executing the substitute statement and the relationship to the non-signing inventor;

• Identify the permitted basis, i.e., whether the inventor is deceased, legally incapacitated, cannot be found after diligent effort, or refuses to execute

Assignment Containing Statements

• Assignment may serve as an oath/declaration if the assignment as executed:

– includes the information and statements required for an oath/declaration; and

– copy of the assignment is recorded in the Office’s assignment database

Eliminated Requirements

• Oath/declaration is no longer required to state:

– Names of all inventors (if provided in an ADS);

– Identification of an inventor’s citizenship;

– That the inventor believes himself or herself to be the “first” inventor; and

– Foreign priority claims (must be provided in an ADS)

• Oath/declaration is no longer required to state that the person making the oath/declaration:

– acknowledges the duty of disclosure; and

– has reviewed and understands the contents of the application

• However, a person may not execute an oath or declaration unless the person:

– is aware of the duty of disclosure; and

– has reviewed and understands the contents of the application

Inventor’s Oath/Declaration:

Forms

• Dual language forms in progress

• No form for combination assignment-statements

– Assignment governed by state law

Timing of Submission (Oath/Dec)

• Oath/declaration may be postponed until the application is otherwise in condition for allowance provided that a signed ADS has been submitted:

– identifying each inventor by his or her legal name; and

– with a mailing address and residence for each inventor

• Oath/declaration must still be provided for a reissue application prior to examination

• Current surcharge is still required when the oath/declaration is not present on filing

Priority and Benefit Claims

• Claim for foreign priority must be set forth in an ADS (except national stage applications)

– Presence of the priority claim in the oath/declaration will not be recognized

• Claim for domestic benefit must be set forth in an ADS

– Presence of the benefit claim in the first sentence(s) of the specification will not be recognized