Type: Law Bulletins
Date: 10/05/2012

Inventor Oath and Declaration Changes under the America Invents Act

On Sunday September 16, 2012, changes to the Oath and Declaration of the inventor became effective due to the passage of the America Invents Act.  The United States Patent & Trademark Office (USPTO) published its new rules relating to these changes on August 14, 2012.  These rules are applicable to all new patent applications filed on or after September 16, 2012.

The changes to the Oath and Declaration are provided for in 35 U.S.C. §§ 115 and 118.  Under the changes, someone other than an inventor or a joint inventor can file a patent application.  Moreover, the term “applicant” is no longer synonymous to an inventor.  With the changes, an assignee or other person who can show a sufficient proprietary interest in the invention may be the applicant.

Under the new rules, the Oath or Declaration being executed by an inventor or joint inventors must include certain language.  In particular, the Oath or Declaration must state that (1) “the application was made or was authorized to be made by the affiant or declarant,” and (2) “such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.”  In addition, a Declaration must state that the inventor acknowledges the penalties applicable for any willful false statement that is punishable under 18 U.S.C. § 1001.

The Oath or Declaration, however, does not require: (1) the names of all inventors, (2) identification of an inventor’s citizenship, (3) that the inventor believes himself or herself to be the “first” inventor, or (4) foreign priority claims.  The Oath or Declaration also does not require a statement that the person making the Oath or Declaration (5) acknowledges the duty of disclosure; or (6) has reviewed and understood the contents of the application.  A person may not execute an Oath or Declaration, however, unless the person is aware of the duty of disclosure and has reviewed and understood the contents of the application.

There are also circumstances where an inventor does not have to execute the Oath or Declaration.  The new rules provide that a substitute statement may be filed by a non-inventor applicant (e.g., an assignee) if the inventor (or joint inventor) is (1) deceased, (2) legally incapacitated, (3) cannot be found or reached after diligent effort, or (4) refuses to execute an oath or declaration.  Under these circumstances, the non-inventor applicant may sign the substitute statement with respect to the inventor so long as the substitute statement (1) identifies the inventor with respect to whom the statement applies, (2) identifies the person executing the substitute statement and the relationship to the non-signing inventor, and (3) identifies the permitted basis under which the substitute statement is being filed (i.e., the inventor is deceased, legally incapacitated, cannot be found after diligent effort or refuses to execute).

An assignment may also serve as the Oath or Declaration under the new rules.  Here, the assignment must include the information and statements required for an Oath or Declaration under the new rules.  In addition, a copy of the assignment must be recorded in the USPTO’s assignment database.

An Oath or Declaration is not required at the same time that the application is filed.  Instead, an applicant may submit an application data sheet that identifies each inventor by his or her legal name and provides a mailing address and residence for each inventor.  The Oath or Declaration (or substitute statement) is required, however, once the application is in condition for allowance.

To facilitate the transition to the new rules, the USPTO provides an exemplary declaration form, Form PTO/AIA/01, that can be found on its website.  In the event a substitute statement is being filed in relation to one or more inventors, Form PTO/AIA/02 is provided on the USPTO website and may be used under the appropriate circumstances.  Additional details regarding the new rules relating to the Oath and Declaration can be found here.

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