combined assignment and declaration

37 CFR § 1.63 - Inventor's oath or declaration.

(a) 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 directed to the application, except as provided for in § 1.64 . An oath or declaration under this section must:

(1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;

(2) Identify the application to which it is directed;

(3) Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and

(4) State that the application was made or was authorized to be made by the person executing the oath or declaration.

(b) Unless the following information is supplied in an application data sheet in accordance with § 1.76 , the oath or declaration must also identify:

(1) Each inventor by his or her legal name; and

(2) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.

(c) A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56 . There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing.

(1) A newly executed oath or declaration under § 1.63 , or substitute statement under § 1.64 , is not required under §§ 1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.

(2) The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.

(3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64 .

(1) An assignment may also serve as an oath or declaration required by this section if the assignment as executed:

(i) Includes the information and statements required under paragraphs (a) and (b) of this section; and

(ii) A copy of the assignment is recorded as provided for in part 3 of this chapter.

(2) Any reference to an oath or declaration under this section includes an assignment as provided for in this paragraph.

(f) With respect to an application naming only one inventor, any reference to the inventor's oath or declaration in this chapter includes a substitute statement executed under § 1.64 . With respect to an application naming more than one inventor, any reference to the inventor's oath or declaration in this chapter means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless otherwise clear from the context.

(g) An oath or declaration under this section, including the statement provided for in paragraph (e) of this section, must be executed ( i.e., signed) in accordance either with § 1.66 or with an acknowledgment that any willful false statement made in such declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.

(h) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1) will be placed in the file record of the application or patent, but may not necessarily be reviewed by the Office. Any request for correction of the named inventorship must comply with § 1.48 in an application and § 1.324 in a patent.

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The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012.  One such change is the ability to incorporate an inventor’s required declaration statements into an assignment document, thereby reducing the number of documents that must be executed by an inventor in connection with filing a patent application.  If an applicant elects to go this route, a single combined declaration and assignment document can be recorded at the United States Patent and Trademark Office (USPTO) and a copy will be automatically placed in the application’s file wrapper.  It appears to be the case, however, that this automatic copying by the USPTO of the combined declaration and assignment into the file wrapper for an application triggers a Notice of Incomplete Reply if there is an outstanding Notice to File Missing Parts or Notice to File Corrected Application Papers that identifies a deficiency in addition to the lack of an oath/declaration—despite the fact that the applicant has not made any reply to such a notice.

This scenario has now been encountered several times in practice and appears to track the following exemplary timeline: An application is filed that does not include an inventor’s oath/declaration and also has some other deficiency that prompts the USPTO to issue a Notice to File Corrected Application Papers or a Notice to File Missing Parts.  Examples of deficiencies that prompt such a notice can include an omission of required fees, submission of non-conforming drawings, etc.  The notice sets out a period for reply to address the identified deficiencies.  In accord with the post-AIA inventor oath/declaration rules, the notice also indicates that there are missing oaths/declarations, but states that there is no set period for submission of these documents.  Rather, an applicant need only ensure that any oaths/declarations or substitute statements are submitted before the application proceeds to issue.

Upon receipt of such a notice, an applicant begins the process of remedying the identified deficiencies.  This might include ordering formal drawings prepared by a draftsperson, drafting a preliminary amendment, etc.  In addition, an applicant might receive an executed combined declaration and assignment from an inventor.  Having received such a document, an applicant might proceed to record the combined declaration and assignment promptly, even before other parts of a response to a Notice to File Corrected Application Papers or Notice to File Missing Parts are ready for submission (e.g., before formal drawings are received from a draftsperson or before claim amendments are finalized, etc.).

Upon recordation of a combined declaration and assignment, the USPTO automatically places a copy of the document in the Image File Wrapper of the application.  While this action is performed automatically by the USPTO, the insertion of the document into the Image File Wrapper is interpreted elsewhere at the USPTO as an attempted response to the pending Notice to File Corrected Application Papers or Notice to File Missing Parts.  Because the combined declaration and assignment does not address the other identified deficiencies of the application, a Notice of Incomplete Reply is issued, citing the applicant’s “reply” on the date the combined declaration and assignment was recorded and setting out a new period of reply to avoid abandonment.

This peculiarity is ultimately harmless, as an applicant can remedy whatever other deficiencies were originally noted in the Notice to File Corrected Application Papers or Notice to File Missing Parts in a response to the Notice of Incomplete Reply.  Regardless though, no one wants to receive a Notice of Incomplete Reply.  To avoid this kind of unexpected consequence (at least until the USPTO gets its left and right hands talking to one another), applicants should consider refraining from recording any combination declaration and assignment documents prior to submitting a response on the merits to a pending Notice to File Corrected Application Papers or Notice to File Missing Parts.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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US Inventor Declarations and Assignments

After a patent application has been filed, the inventor may be required to sign and submit various forms.  What happens if this is several years into the patent process, and the inventor can no longer be reached to sign these forms?  And what can you do now to prevent any complications from arising?  

One country which requires the inventor to submit signed forms is the USA.  Each inventor named on the application must submit a signed declaration and assignment with the US Patent and Trademark Office before payment of the Issue Fee.

What are US Declarations and Assignments?

An inventor declaration confirms the inventor’s belief that they are the original (or joint original) inventor of the claimed invention.  If an inventor declaration is not submitted by each inventor before payment of the Issue Fee, the application will be abandoned.

An assignment provides documentary evidence that the rights in the invention have been transferred from the inventor to the applicant, and that the applicant is the rightful owner of any patent granted for the claimed invention.  If a signed assignment is not submitted by each inventor before payment of the Issue Fee, the application could grant in the name of the inventor(s) instead of the applicant, although this can usually be rectified post-grant.

What if the inventor cannot or will not sign these forms?

In cases where the US application is filed later in the patent process, such as at the 12 month convention deadline, or even the 30 month national phase deadline, it is possible that the inventor(s) may no longer be available to sign the required forms (for example, they have left the company).  What happens then?

A substitute statement can be submitted in lieu of a declaration if an inventor is deceased, is under legal incapacity, has refused to sign the declaration, or cannot be found or reached after a diligent effort.  To demonstrate a “ diligent effort ”, it is usually sufficient to send a copy of the forms to the inventor’s last known address, along with an explanation of what is required and specifying a reasonable time-period for returning the signed forms (for example, 28 days).  If the forms are not returned by the end of this period, then it can be assumed that the inventor is no longer reachable.

If an inventor cannot or will not sign the required assignment to transfer their rights in the invention to the applicant, then one possible option where the inventor is an employee of the applicant is to submit their employment agreement in lieu of the assignment.  However, for the purposes of the USA, the employment agreement must address the employee’s obligation to assign any Intellectual Property (IP) rights created during their employment to their employer.  Ideally the document should contain language which indicates a present and active intent to assign any IP rights (for example, “ I hereby assign… ”), rather than language which merely indicates an intent to assign any IP rights in the future (for example, “ I agree to assign… ”).

If the employment agreement does not contain suitable language, one option is to rely on any local IP laws which legally require the employee to assign any IP rights to their employer.  For example, in the UK, section 39 of the Patents Act 1977 states that an invention made by an employee will automatically belong to the employer if:

“ (a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or

(b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer’s undertaking. ”

Therefore, if the employee and the employer are based in the UK and the invention falls into category (a) or (b) above, then the invention will automatically belong to the employer under UK law.

As such, in addition to filing a copy of the employment contract, a copy of the relevant local laws and a memorandum explaining why, under local law, the invention belongs to the employer can also be filed to prove full ownership of the application by the applicant.

What can the applicant do to avoid the above complications?

1/ Make use of PCT declarations if filing an International application, particularly:

• (i) the declaration as to the identity of the inventor;
• (ii) the declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent; and,
• (iv) the declaration of inventorship (for the purposes of the designation of the USA).

For example, declaration (ii) satisfies the proof of right requirements in the Indian national phase, and (iv) satisfies the declaration requirements in the US national phase.  Declarations (i) and (ii) can be signed off by the acting attorney; declaration (iv) however must be signed by each inventor.

2/ Make sure any employment agreements, particularly for research & development staff, clearly address the employee’s obligation to assign any IP rights created, and include language which actively and presently assigns those rights to the employer.

If existing employment agreements do not contain such clauses, a separate agreement can be drawn up for the employee to sign and then appended to their contract. 

3/ Include a clause in the employment agreement requiring the employee to sign any necessary forms both during and after their employment.  This contractual agreement can be referred to should the employee actively refuse to sign any required forms later in the patent process.

Taking the above actions now can help to avoid any problems later in the patenting process which will likely incur unnecessary costs to rectify.  Should you require any assistance or advice, please contact me at christina .schiavone@ wynne-jones .com .

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Final Rules Released for Oath or Declaration Provisions - What You Need To Know

On August 14, 2012, the United States Patent Office (USPTO) issued final rules that will implement the America Invents Act (AIA) provisions relating to the inventor’s oath or declaration (discussed below as “declaration” for simplicity). These final rules drastically change many aspects of the prior rules relating to the content of declarations and the timing for filing declarations. Thus, for applications having a filing date on or after September 16, 2012, patent applicants can expect to see very different declarations provided for signature.

How Has the Required Content of the Declaration Changed?

Although an inventor’s declaration still must be executed (except in limited circumstances described below), the new rules reduce the required statements and result in a streamlined declaration. Many pieces of information previously contained in the declaration will be moved to an application data sheet (ADS), which is prepared by the patent attorney just prior to filing the patent application. For example, the ADS will be the Patent Office’s sole source of information for the listing of the inventors and any foreign and domestic priority claims.

The declaration must contain a statement that the application was made or was authorized to be made, by the person signing the declaration and that the inventor is believed to be the original inventor or an original joint inventor of an invention claimed in the patent application. For this reason, the person signing the declaration must still have reviewed the application and be aware of the duty of disclosure.

The citizenship of the inventors and the names of the inventors no longer need to be listed in the declaration text (if provided in an ADS). The inventor no longer needs to state in the declaration that the inventor is believed to be the “first” inventor, in light of the AIA changing the U.S. to a first to file system. Also removed from the requirements for the declaration are the statement of foreign priority claims and any statements relating to the inventor’s understanding of the application, the duty of disclosure, the potential impact of willful false statements on the application or issuing patent’s validity, and the belief by the inventor of the truthfulness of his or her statements made in the declaration.

Some patent owners may decide to combine the simplified statements required for declarations into an assignment document and require only one signature for each inventor, which is allowed under the new rules. The combined assignment and declaration can be recorded as a single document in the same manner as a traditional assignment.

Do I need a Newly Executed Declaration in a Continuing Application?

Traditionally, the original declaration from a parent application can be filed in a continuation, divisional, or continuation-in-part application that includes the aforementioned statements required under the final rules, provided the inventors are the same. However, a previous declaration from a parent application filed before the final rules go into effect (i.e., before September 16, 2012) will likely not include some of the required language. Thus, a continuation, divisional or continuation-in-part application filed after September 16, 2012 and claiming priority to an application filed before September 16, 2012 will likely require a newly executed declaration that contains the newly required language.

When is a Declaration Not Needed?

The final rules allow for a substitute statement to be filed in lieu of a declaration when an inventor is deceased, incapacitated, or refuses to execute a declaration, or cannot be reached after diligent effort. While petitions or other corresponding procedures existed in the previous rules, the final rules no longer require proof of facts to support the filing of a substitute statement. Instead, only an explanation of the circumstances, the name of the inventor at issue, and the person signing the substitute statement are required.

When Does a Declaration Need to Be Submitted?

Under the new procedures, a declaration no longer needs to be submitted prior to examination of a patent application, provided that an application data sheet is filed before examination that lists the name, residence, and mailing address of each inventor. A declaration need not be submitted until the patent application is in an allowable form, and prior to a deadline provided within a Notice of Allowability. If the application does not include a declaration in the initial filing, a $130 surcharge will be incurred, provided the initial filing includes the aforementioned application data sheet. However, a delay in filing an executed declaration in a U.S. national stage application after national stage entry could reduce the accrual of USPTO delay-based patent term adjustment.

How Have the Revised Declaration Rules Affected a Priority Claim?

Under the new procedures, a declaration containing a claim to foreign priority is no longer effective in establishing the foreign priority claim. Also, a domestic priority claim that is not in the application data sheet, but that is listed only in the written description of a patent application, will no longer be effective. Instead, a claim for either foreign or domestic priority must be provided in an application data sheet.

What to Do Now?

With the implementation of the new rules on September 16, 2012, patent applicants will notice a change in the documents they are requested to sign in connection with a patent application. The declarations should be streamlined and can be combined with the assignment to further simplify the signing by inventors. Nevertheless, it is important that the inventors review the patent application prior to signing the simplified documents and it is important that each inventor be reminded of the duty to submit to the Patent Office information relevant to patentability of the invention.

For further discussion of the content of this bulletin, please contact us .

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The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012.

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The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012. These new provisions went into effect on September 16, 2012 and apply to all non-PCT U.S. patent applications filed under 35 U.S.C.§ 111(a) (including continuing and PCT bypass applications) filed on or after September 16, 2012. These provisions are applicable to oaths and declarations in design, plant, and reissue applications irrespective of the fact that they are not filed under 35 U.S.C.§ 111(a).

Forms are now available for download. Our old forms are also available since for PCT national stage applications, the new inventor's oath/declaration provisions only apply to applications having an international filing date on or after September 16, 2012. Accordingly, the old inventor oath/declaration forms should be used for any such national stage applications with an international filing date prior to September 16, 2012.

You will notice that there are now several options available: A combined Declaration/Assignment document or a Declaration document that will need to be filed with a separate Assignment instrument. In both cases a separate Power of Attorney form will need to be submitted. These forms are available on our "Download" tab above. The other noticeable change is that as a result of the new requirement for an Application Data Sheet to be submitted with all new applications, the Declaration form itself contains only very basic information, and each inventor signs his or her own copy of the Declaration or Declaration/Assignment form. All of the signed forms are then submitted to the USPTO.

Regarding the Power of Attorney, if an assignee files an application as the applicant, a Power of Attorney by Applicant form should be signed by a party authorized to act on behalf of the assignee. After a company provides our firm with an executed Power of Attorney by Applicant, it will not be necessary to provide us any further Power of Attorney forms for future filings of patent applications on behalf of that assignee so long as the assignee is the applicant in those cases. Accordingly, a copy of the Power of Attorney by Applicant will be filed along with a Transmittal form, which our firm will prepare and execute, identifying a specific application for the Power of Attorney.

Similarly, if there is no assignee, or if the assignee has opted not to file the application and not to take over prosecution to the exclusion of the Inventor(s), the Inventor(s) and/or an Inventor’s Legal Representative (if an Inventor is deceased or legally incapacitated) are the applicants and should execute the Power of Attorney by Applicant . This will grant our firm Power of Attorney for one specific patent application identified in an attached Transmittal form, which we will prepare and execute. If, however, the Inventor(s) are the original applicants of an application and an assignee or assignees wishes to take over prosecution to the exclusion of the Inventor(s), a representative of the company, i.e., the assignee, should execute a Power of Attorney to Prosecute to be filed along with a Statement Under § 3.73(c) establishing ownership of the application. To establish ownership, any Assignment from the Inventor(s) must be recorded concurrently with or prior to the filing of the Power of Attorney to Prosecute. Please note that the filing of an ADS with a new application sets forth the identification of the applicant. Where an application is filed without indentifying an assignee(s) as the applicant, the USPTO identifies the inventor(s) as the applicant. Under such circumstances, if the assignee wishes to be identified as the applicant, then the assignee(s) would need to execute a Power of Attorney to Prosecute to be filed along with along with a Statement Under § 3.73(c) rather than a Power of Attorney by Applicant.

The following USPTO patent forms may be installed on your computer. Please click on the appropriate declaration or assignment form below to see instructions on how to use the form and how to download/save it to your computer. You may then open and use the forms directly from your computer.

• Power of Attorney Flowchart
• Inventor Declaration for Utility or Design Application and Assignment for Single Assignee
• Inventor Declaration for Utility or Design Application and Assignment for Multiple Assignees
• Power of Attorney by Applicant (Inventor) - Use this form when the Inventor is granting Power of Attorney
• Power of Attorney by Applicant (Assignee) - Use this form when the Assignee is granting Power of Attorney
• Power of Attorney to Prosecute Applications Before the USPTO - Use this form if the Assignee wishes to take over prosecution to the exclusion of the Inventor(s)
• Inventor Declaration for Utility or Design Application
• Inventor Declaration for Plant Application
• Supplemental Sheet for Declaration and Assignment Forms
• Japanese Declaration and Assignment with Supplemental Sheet
• Japanese Declaration and Assignment - Multiple Assignees
• Single Assignee
• Multiple Assignees

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