The law requires the statement to set forth “the full facts” surrounding the conception and making of the invention. These facts should include those which are unique to that invention. The use of form paragraphs or printed forms which set forth only broad generalized statements of fact is not ordinarily regarded as meeting the requirements of these statutes.
The word “applicant” in both of these statutes is construed by the Office to mean the inventor or joint inventors in person, or an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter. Accordingly, in the ordinary situation, the statements must be signed by the inventor or the joint inventors, or an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter if available. This construction is consistent with the fact that no other person could normally be more knowledgeable of the “full facts concerning the circumstances under which such invention was made,” (42 U.S.C. 2457) or, “full facts surrounding the making or conception of the invention or discovery” (42 U.S.C. 2182). If a request under 37 CFR 1.48 for correction of inventorship is granted during pendency of an application in which a property rights statement has been filed, a supplemental statement executed by any added inventor(s) is required and should promptly be filed with Licensing and Review.
In instances where an applicant does not have firsthand knowledge whether the invention involved work under any contract, subcontract, or arrangement with or for the benefit of the Atomic Energy Commission, or had any relationship to any work under any contract of the National Aeronautics and Space Administration, and includes in his or her statement information of this nature derived from others, his or her statement should identify the source of his or her information. Alternatively, the statement by the applicant could be accompanied by a supplemental declaration or oath, as to the contractual matters, by the assignee or other person, e.g., an employee thereof, who has the requisite knowledge.
When an inventor applicant is deceased or legally incapacitated, or where it is shown to the satisfaction of this Office that he or she refuses to furnish a statement or cannot be reached after diligent efforts, declarations or statements under oath setting forth the information required by the statutes may be accepted from an officer or employee of the assignee who has sufficient knowledge of the facts. The offer of such substitute statements should be based on the actual unavailability of or refusal by the applicant, rather than mere inconvenience. Where it is shown that one of the joint inventors is deceased or unavailable, a statement by all of the other inventor(s) may be accepted.
The following is an acceptable format for statements to DOE or NASA assuming that no government funds or other considerations were involved in the making or conception of the invention. It is important that the information provided in the statement be an accurate reflection of the fact situation at the time the statement is made. While the sample below is in the form of a declaration, a sworn oath is equally acceptable.
Note that the statement must be in the form of an oath or declaration. Further note that the statement must be signed by all the inventors. See also the notice entitled “Statements Filed Under Atomic Energy Act and NASA Act” published in 914 OG 1 (Sept. 4, 1973) for further information.
I (We) _____________________ citizens of residing at declare: That I (we) made and conceived the invention described and claimed in patent application number filed in the United States of America on titled.
I (We) ________________ citizens of ________________ residing at ________________ declare: That I (we) made and conceived the invention described and claimed in patent application number ________________ filed in the United States of America on ________________ titled ________________.
(Include completed I. or II. below)
I. (for Inventors Employed by an Organization)
That I (we) made and conceived this invention while employed by ________________.
That the invention is related to the work I am (we are) employed to perform and was made within the scope of my (our) employment duties;
That the invention was made during working hours and with the use of facilities, equipment, materials, funds, information and services of ________________.
Other relevant facts are: ________________.
That to the best of my (our) knowledge and belief based upon information provided by ________________ of ________________:
II. (For Self-Employed Inventors)
That I (we) made and conceived this invention on my (our) own time using only my (our) own facilities, equipment, materials, funds, information and services.
Other relevant facts are ________________
That to the best of my (our) knowledge and belief:
(Include III. and/or IV. below as appropriate)
III. The invention or discovery was not made or conceived in the course of, or in connection with, or under the terms of any contract, subcontract or arrangement entered into with or for the benefit of the United States Atomic Energy Commission or its successors Energy Research and Development Administration or the Department of Energy.
IV. The invention was not made under nor is there any relationship of the invention to the performance of any work under any contract of the National Aeronautics and Space Administration.
V. The undersigned inventor(s) declare(s) further that all statements made herein of his or her (their)own knowledge are true and that all statements made on information and belief are believed to be true and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issuing thereon.
Post Office Address________________
Inventor’ s Signature________________
Post Office Address________________