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8.7 “Inventors Oath or Declaration” – America Invents Act

Inventors Oath or Declaration America Invents Act Patent Law

Inventors Oath or Declaration America Invents Act Patent Law

Overview

Section 4 of the America invents act affects requirements regarding the inventors oath or declaration.

Specifics

This change provides for the submission of an inventor’s declaration in place of an inventors oath.  The inventor no longer required to state his or her country of citizenship, that they are the first inventor, application is made w/o deceptive intent.  New requirements include the necessity to state that they are an original inventor of the claimed invention and that they authorized the filing of the application.

The new rules also allow for the applicant to provide a substitute statement explaining the situation in lieu of the inventors oath or declaration 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 changes allow for an examination to take place without the submission of an oath or declaration, however the office will likely not allow examination without these documents.  The office feels that the inventors oath or declaration is needed before examination so that 35 USC 102 issues can be adequately considered.  Also, true inventor should be established before a rejection based on double patenting can issue.

A non-inventor is allowed to file an application if: It is assigned to them; The inventors under an obligation to assign the invention; The non-inventor shows sufficient proprietary interest.  A company can be the applicant but the inventor must still sign the Oath/Declaration.

An Oath/Declaration substitute statement can only be used if the inventor: Refused to execute an Oath/Declaration; Can’t be found/reached (Diligent effort required); Is deceased or Is legally incapacitated.

If an assignee is the applicant the assignee can grant power of attorney. The assignee no longer is required to establish ownership before granting power of attorney.  A combination Oath/Declaration & assignment can be filed.

One final change regarding inventorship allows the office to grant a patent to “real party in interest” when the application is filed by a person other than the inventor.

This provision allows a Notice of Allowance to issue only if: Oath/Declaration is filed or; substitute statement for Oath/Declaration is filed or; assignment with Oath/Declaration and required signatures is filed and on record.

Applicant can file the Oath/Declaration upon filing the application or at issuance of notice of allowance.  However, if at the notice of allowance this must have a signed application data sheet identifying the inventive entities (each inventor, mailing addresses of inventors and residences).

If Oath/Declaration omitted and patent is in condition for allowance a Notice of Allowability will be filed requesting the Oath/Declaration or signed ADS.  If no Oath/Declaration or ADS is filed the office will send Notice to File Missing Parts to start the examination.

In CIP applications the original application’s declaration can be used to define the inventive entity.

If there is an additional new inventor on the CIP an ADS or additional declaration can be used to add the new inventor.  The old declaration can be used for the inventor from the original declaration, but it must conform to 35 U.S.C. 115.  The new declaration for a new inventor does not need to include the original inventor.

New statutory language for Oath/Declaration form:  “The application was made or authorized to be made by the affiant or declarant”; Penalties clause acknowledgement must include, “imprisonment of not more than 5 years”; the new Oath/Declaration form with the required language is on the USPTO website.

Key dates

September 16, 2012

  • When section 4 became effective

August 14, 2012

  • When the final rules were published

Key concepts

  • Inventors oath no longer mandatory
  • Inventors declaration only mandatory
  • Substitute statement allowed over oath and declaration of inventor
  • Non-inventor allowed to file application
  • No proof inventor not available for non-inventor to file
  • No more need to state lack of deceptive intent