602.01(b) Inventorâs Oath or Declaration in Application Filed Before September 16, 2012 [R-07.2022]
602.01(b) Inventor’s Oath or Declaration in Application Filed Before September 16, 2012 [R-07.2022]
[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.]
35 U.S.C. 115 (pre-AIA) Oath of applicant.
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).
37 CFR 1.63 (pre-AIA) Oath or declaration.
- (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.
- (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:
- (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 § 602.08et 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.