1893.01(e) Inventor’s Oath or Declaration [R-07.2022]

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1893.01(e) Inventor’s Oath or Declaration [R-07.2022]

35 U.S.C. 371  National stage: Commencement.

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  • (c) The applicant shall file in the Patent and Trademark Office –
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    • (4) an oath or declaration of the inventor (or other person authorized under chapter 11) complying with the requirements of section 115 and with regulations prescribed for oaths or declarations of applicants;

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Pursuant to 35 U.S.C. 371(c)(4), the applicant for a national stage application is required to file an oath or declaration of the inventor (or other person authorized under 35 U.S.C. chapter 11) complying with the requirements of 35 U.S.C. 115 and with regulations prescribed for oaths or declarations of applicants. The America Invents Act (AIA) amended 35 U.S.C. 115 with effect for applications filed on or after September 16, 2012. As a consequence of this change, the oath or declaration requirements for a national stage application differ depending on the international filing date of the national stage application, as set forth below.

I. NATIONAL STAGE APPLICATIONS HAVING AN INTERNATIONAL FILING DATE ON OR AFTER SEPTEMBER 16, 2012

37 CFR 1.41 Inventorship

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]

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  • (e) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371. Unless the initial submission under 35 U.S.C. 371 is accompanied by an application data sheet in accordance with § 1.76 setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis.

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37 CFR 1.497 Inventor’s oath or declaration under 35 U.S.C. 371(c)(4).

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]

  • (a) When an applicant of an international application desires to enter the national stage under 35 U.S.C. 371 pursuant to § 1.495, and a declaration in compliance with § 1.63 has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26ter.1, the applicant must file the inventor’s oath or declaration. 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 in accordance with the conditions and requirements of § 1.63, except as provided for in § 1.64.
  • (b) An oath or declaration under § 1.63 will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the requirements of §§ 1.63(a), (c) and (g). A substitute statement under § 1.64 will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the requirements of §§ 1.64(b)(1), (c) and (e) and identifies the person executing the substitute statement. If a newly executed inventor’s oath or declaration under § 1.63 or substitute statement under § 1.64 is not required pursuant to § 1.63(d), submission of the copy of the previously executed oath, declaration, or substitute statement under § 1.63(d)(1) is required to comply with 35 U.S.C. 371(c)(4).
  • (c) If an oath or declaration under § 1.63, or substitute statement under § 1.64, meeting the requirements of § 1.497(b) does not also meet the requirements of § 1.63 or § 1.64, an oath, declaration, substitute statement, or application data sheet in accordance with § 1.76 to comply with § 1.63 or § 1.64 will be required.

Applicants entering the national stage under 35 U.S.C. 371 for an international application having an international filing date on or after September 16, 2012 are required to file an inventor’s oath or declaration in accordance with 37 CFR 1.497 unless a declaration in compliance with 37 CFR 1.63 was previously submitted in the international phase under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26ter.1.

The inventor’s oath or declaration will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the minimum requirements set forth in 37 CFR 1.497(b). However, if the inventor’s oath or declaration does not satisfy all the requirements of 37 CFR 1.63 or 1.64, the applicant will be required to comply with the outstanding requirements. See 37 CFR 1.497(c).

The filing of the inventor’s oath or declaration may be postponed until the application is otherwise in condition for allowance if applicant submits an application data sheet in accordance with 37 CFR 1.76 identifying each inventor by his or her legal name, the mailing address where each inventor customarily receives mail, and the residence of each inventor, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.495(c)(3). Postponement of the filing of the inventor’s oath or declaration pursuant to 37 CFR 1.495(c) will not postpone the requirement to pay the surcharge fee under 37 CFR 1.492(h) for filing the inventor’s oath or declaration after the date of commencement. As discussed in MPEP § 706.07(h), subsection I, notwithstanding 37 CFR 1.495(c)(3) permitting postponement, all required inventor’s oaths or declarations (or substitute statements) must be filed prior to or with a request for continued examination (RCE) under 37 CFR 1.114. Early national stage entry under 35 U.S.C. 371(f) also requires the submission of the oath or declaration required by 35 U.S.C. 371(c)(4) and submission also may not be postponed in this situation.

If the basic national fee and copy of the international application have been received by the expiration of 30 months from the priority date, but applicant has not submitted 1) the required inventor’s oath or declaration, or 2) an application data sheet in compliance with 37 CFR 1.495(c)(3), the Office will send applicant a Notification of Missing Requirements (Form PCT/DO/EO/905) setting a time period to submit the required inventor’s oath or declaration or application data sheet and surcharge fee under 37 CFR 1.492(h) unless previously paid. Failure to timely file the required reply will result in abandonment of the application.

The inventor’s oath or declaration must be executed by each inventor, except as provided under 37 CFR 1.64. The inventorship of an international application entering the national stage under 35 U.S.C. 371 having an international filing date on or after September 16, 2012, is the inventor or joint inventors set forth in an application data sheet in accordance with 37 CFR 1.76 accompanying the initial submission under 35 U.S.C. 371. If the initial submission under 35 U.S.C. 371 is not accompanied by an application data sheet in accordance with 37 CFR 1.76, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis. See 37 CFR 1.41(e). Inventorship may be corrected under the procedure set forth in 37 CFR 1.48(a). The name of an inventor may be corrected or updated under the procedure set forth in 37 CFR 1.48(f).

If the inventor is deceased, is under legal incapacity, has refused to execute the oath or declaration under 37 CFR 1.63, or cannot be found or reached after diligent effort, the applicant under 37 CFR 1.43, 1.45 or 1.46 may execute a substitute statement under 1.64 in lieu of an oath or declaration under 37 CFR 1.63.

II. NATIONAL STAGE APPLICATIONS HAVING AN INTERNATIONAL FILING DATE BEFORE SEPTEMBER 16, 2012

37 CFR 1.41 (pre-AIA) Applicant for Patent

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 prior to September 16, 2012]

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  • (a)
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    • (4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis. See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv) (§ 1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371).

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37 CFR 1.497 (pre-AIA) Oath or declaration under 35 U.S.C. 371(c)(4).

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 prior to September 16, 2012]

  • (a) When an applicant of an international application desires to enter the national stage under 35 U.S.C. 371 pursuant to § 1.495 , and a declaration in compliance with this section has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26 ter.1, he or she must file an oath or declaration that:
    • (1) Is executed in accordance with either §§  1.66 or 1.68;
    • (2) Identifies the specification to which it is directed;
    • (3) Identifies each inventor and the country of citizenship of each inventor; and
    • (4) States 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)
    • (1) The oath or declaration must be made by all of the actual inventors except as provided for in §§ 1.42, 1.43 or 1.47.
    • (2) If the person making the oath or declaration or any supplemental oath or declaration is not the inventor (§§ 1.42, 1.43, or § 1.47), the oath or declaration shall state the relationship of the person to the inventor, and, upon information and belief, the facts which the inventor would have been required to state. If the person signing the oath or declaration is the legal representative of a deceased inventor, the oath or declaration shall also state that the person is a legal representative and the citizenship, residence and mailing address of the legal representative.
  • (c) Subject to paragraph (f) of this section, if the oath or declaration meets the requirements of paragraphs (a) and (b) of this section, the oath or declaration will be accepted as complying with 35 U.S.C. 371(c)(4) and § 1.495(c). However, if the oath or declaration does not also meet the requirements of § 1.63, a supplemental oath or declaration in compliance with § 1.63 or an application data sheet will be required in accordance with § 1.67.
  • (d) If the oath or declaration filed pursuant to 35 U.S.C. 371(c)(4) and this section names an inventive entity different from the inventive entity set forth in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any oath or declaration which was filed in the application under PCT Rule 4.17(iv) or this section and the inventive entity thus changed is different from the inventive entity identified in any such oath or declaration, applicant must submit:
    • (1) A statement from each person being added as an inventor and from each person being deleted as an inventor that any error in inventorship in the international application occurred without deceptive intention on his or her part;
    • (2) The processing fee set forth in § 1.17(i); and
    • (3) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter); and
    • (4) Any new oath or declaration required by paragraph (f) of this section.
  • (e) The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.
  • (f) A new oath or declaration in accordance with this section must be filed to satisfy 35 U.S.C. 371(c)(4) if the declaration was filed under PCT Rule 4.17(iv), and:
    • (1) There was a change in the international filing date pursuant to PCT Rule 20.5(c) after the declaration was executed; or
    • (2) A change in the inventive entity was effected under PCT Rule 92bis after the declaration was executed and no declaration which sets forth and is executed by the inventive entity as so changed has been filed in the application.
  • (g) If a priority claim has been corrected or added pursuant to PCT Rule 26 bis during the international stage after the declaration of inventorship was executed in the international application under PCT Rule 4.17(iv), applicant will be required to submit either a new oath or declaration or an application data sheet as set forth in § 1.76 correctly identifying the application upon which priority is claimed.

Applicants entering the national stage under 35 U.S.C. 371 for an international application having an international filing date prior to September 16, 2012 are required to file an oath or declaration of the inventor in accordance with pre-AIA 37 CFR 1.497(a) and (b). If the basic national fee and copy of the international application have been received by the expiration of 30 months from the priority date, but the required oath or declaration has not been filed, the Office will send applicant a Notification of Missing Requirements (Form PCT/DO/EO/905) setting a time period to correct any missing or defective requirements and to submit the surcharge fee required under 37 CFR 1.492(h) unless previously paid. Failure to timely file the required oath or declaration will result in abandonment of the application.

An oath or declaration satisfying the requirements of pre-AIA 37 CFR 1.497(a) – (b) will be sufficient for the purposes of entering the U.S. national phase. However, if the oath or declaration fails to also comply with the additional requirements for oaths and declarations set forth in 37 CFR 1.63, applicants will need to submit a supplemental oath or declaration, or an application data sheet where permitted under 37 CFR 1.63(c), to correct the deficiency. See 37 CFR 1.497(c).

In general, the requirement for an oath or declaration in compliance with 37 CFR 1.497(a) – (b) will have been previously satisfied if a declaration in compliance with PCT Rule 4.17(iv) executed by all the inventors was submitted within the time limits provided in PCT Rule 26ter.1 in the international phase. However, if the inventorship was changed in the international application under PCT Rule 92bis such that the inventorship identified in the PCT Rule 4.17(iv) declaration no longer corresponds to that of the international application (see pre-AIA 37 CFR 1.41(a)(4)), then a new oath or declaration in accordance with 37 CFR 1.497(a) – (b) may be required to enter the national stage. See pre-AIA 37 CFR 1.497(f)(2). Similarly, a new oath or declaration in compliance with 37 CFR 1.497(a) – (b) is required where the PCT Rule 4.17(iv) declaration was executed prior to a change in the international filing date pursuant to PCT Rule 20.5(c). See pre-AIA 37 CFR 1.497(f)(1). In addition, where a priority claim has been corrected or added pursuant to PCT Rule 26.2bis after execution of the PCT Rule 4.17(iv) declaration, then a supplemental oath or declaration, or an application data sheet, identifying the correct priority claim will be required. See pre-AIA 37 CFR 1.497(g).

The inventorship of an international application entering the national stage under 35 U.S.C. 371 having an international filing date before September 16, 2012 is that inventorship set forth in the international application, which includes any changes effected under PCT Rule 92bis. See pre-AIA 37 CFR 1.41(a)(4). Accordingly, an oath or declaration that names an inventive entity different than that set forth in the international application will not be accepted for purposes of entering the U.S. national phase unless the inventorship is corrected. See the procedures set forth in pre-AIA 37 CFR 1.497(d) and 37 CFR 1.48(a) for correcting inventorship. If an inventor refuses to execute the oath or declaration or cannot be found or reached after diligent effort, applicant may file an oath or declaration and a petition in accordance with pre-AIA 37 CFR 1.47. Similarly, where an inventor is deceased or legally incapacitated, an oath or declaration may be made in accordance with the provisions of pre-AIA 37 CFR 1.42 or 1.43. See pre-AIA 37 CFR 1.497(b).

Where there has been no change of inventorship but there is a discrepancy between the name of an inventor as indicated in the international application during the international phase and the corresponding name indicated in an oath or declaration submitted under 37 CFR 1.497, correction will be required to accept the oath or declaration with the different name. Effective September 16, 2012, the procedure set forth in 37 CFR 1.48(f) may be used to correct or update the name of an inventor in a nonprovisional application. In applications where the procedure under 37 CFR 1.48(f) is not available, correction may be made by way of petition under 37 CFR 1.182 to accept the oath or declaration with the different name.