605.03   Applicant’s Mailing or Post Office Address [R-7]

Each applicant’s mailing or post office address is required to be supplied on the oath or declaration, if not stated in an application data sheet. Applicant’s mailing address means that address at which he or she customarily receives his or her mail. Either applicant’s home or business address is acceptable as the mailing address. The mailing address should include the ZIP Code designation. Since the term "post office address" as previously used in 37 CFR 1.63  may be confusing, effective November 7, 2000, 37 CFR 1.63  was amended to use the term "mailing address" instead.

The object of requiring each applicant’s mailing address is to enable the Office to communicate directly with the applicant if desired; hence, the address of the attorney with instruction to send communications to applicant in care of the attorney is not sufficient.

In situations where an inventor does not execute the oath or declaration and the inventor is not deceased, such as in an application filed under 37 CFR 1.47, the inventor’s most recent home address must be given to enable the Office to communicate directly with the inventor as necessary.

If an oath or declaration was filed prior to December 1, 1997 and the post office address was incomplete or omitted from the oath or declaration, "Notice of Informal Application" or form paragraph 6.09.01 may be used to notify applicant of the deficiency of the post office address.

¶ 6.09.01    Post Office Address Omitted, Residence Given

Applicant has not given a post office address anywhere in the application papers as required by 37 CFR 1.33(a), which was in effect at the time of filing of the oath or declaration. A statement over applicant’s signature providing a complete post office address is required.

Examiner Note:

1. This form paragraph should only be used where the Post Office address has been omitted in an oath or declaration filed prior to December 1, 1997. Use form paragraphs 6.05 and 6.05.19 if the oath or declaration was filed on or after December 1, 1997.

2. If both the post office address and residence are incomplete, not uniform or omitted, use form paragraphs 6.05 and 6.05.02.

Oaths or declarations filed on or after December 1, 1997 must include the mailing or post office address of each inventor. Effective November 7, 2000 the mailing address of each inventor may be provided in an application data sheet. See 37 CFR 1.63 (c) and 37 CFR 1.76. In an application filed before November 29, 2000, the Office of Patent Application Processing (OPAP) will normally indicate the omission of an inventor’s mailing address on a "Notice of Informal Application," requiring a new oath or declaration when the form is sent out with an Office action. For utility and plant applications filed on or after November 29, 2000, applicant’s mailing address may be needed for any patent application publication. If the mailing address of any inventor has been omitted, OPAP will notify applicant of the omission and require the omitted mailing address in response to the notice. If the examiner notes that the mailing or post office address has not been included in an oath or declaration filed on or after December 1, 1997, and the mailing address is not provided in an application data sheet, form paragraphs 6.05 (reproduced in MPEP § 605.01) and 6.05.19 may be used to notify applicant that the mailing or post office address has been omitted from the oath or declaration.

¶ 6.05.19    Mailing Address Omitted

It does not identify the mailing address of each inventor. A mailing address is an address at which an inventor customarily receives his or her mail and may be either a home or business address. The mailing address should include the ZIP Code designation. The mailing address may be provided in an application data sheet or a supplemental oath or declaration. See 37 CFR 1.63(c)  and 37 CFR 1.76.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

605.04(a)   Applicant’s Signature and Name [R-7]

37 C.F.R. 1.64   Person making oath or declaration.

  • (a) The oath or declaration (§ 1.63 ), including any supplemental oath or declaration (§ 1.67 ), must be made by all of the actual inventors except as provided for in §§ 1.42, 1.43, 1.47, or § 1.67.
  • (b) If the person making the oath or declaration or any supplemental oath or declaration is not the inventor (§§ 1.42, 1.43, 1.47, or § 1.67 ), the oath or declaration shall state the relationship of the person to the inventor, and, upon information and belief, the facts which the inventor is 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.

I.   EXECUTION OF OATHS OR DECLARATIONS OF PATENT APPLICATIONS

United States patent applications which have not been prepared and executed in accordance with the requirements of Title 35 of the United States Code and Title 37 of the Code of Federal Regulations may be abandoned. Although the statute and the rules have been in existence for many years, the Office continues to receive a number of applications which have been improperly executed and/or filed. Since the improper execution and/or filing of patent applications can ultimately result in a loss of rights, it is appropriate to emphasize the importance of proper execution and filing.

There is no requirement that a signature be made in any particular manner. See MPEP § 605.04(d). If applicant signs his or her name using non-English characters, then such a signature will be accepted.

Applications filed through the Electronic Filing System must also contain an oath or declaration personally signed by the inventor.

It is improper for an applicant to sign an oath or declaration which is not attached to or does not identify a specification and/or claims.

Attached does not necessarily mean that all the papers must be literally fastened. It is sufficient that the specification, including the claims, and the oath or declaration are physically located together at the time of execution. Physical connection is not required. Copies of declarations are encouraged. See MPEP § 502.01, § 502.02, § 602, and § 602.05(a).

An oath or declaration under 37 CFR 1.63  by each actual inventor must be presented. While each inventor need not execute the same oath or declaration, each oath or declaration executed by an inventor must contain a complete listing of all inventors so as to clearly indicate what each inventor believes to be the appropriate inventive entity. Where individual declarations are executed, they must be submitted as individual declarations rather than combined into one declaration (by combining the signature pages).

The provisions of 35 U.S.C. 363  for filing an international application under the Patent Cooperation Treaty (PCT) which designates the United States and thereby has the effect of a regularly filed United States national application, except as provided in 35 U.S.C. 102(e), are somewhat different than the provisions of 35 U.S.C. 111. The oath or declaration requirements for an international application before the Patent and Trademark Office are set forth in 35 U.S.C. 371(c) (4) and 37 CFR 1.497.

37 CFR 1.52(c)(1)  states that "[a]ny interlineation, erasure, cancellation or other alteration of the application papers filed must be made before the signing of any accompanying oath or declaration pursuant to § 1.63  referring to those application papers and should be dated and initialed or signed by the applicant on the same sheet of paper. Application papers containing alterations made after the signing of an oath or declaration referring to those application papers must be supported by a supplemental oath or declaration under § 1.67. In either situation, a substitute specification (§ 1.125 ) is required if the application papers do not comply with paragraphs (a) and (b) of this section." 37 CFR 1.52(c)(2)  states that after the signing of the oath or declaration referring to the application papers, amendments may only be made in the manner provided by 37 CFR 1.121. An application submitted through the electronic filing system (EFS) may include scanned images of a declaration executed by the inventor. The reformatting of an application in submitting the specification of the application using EFS, is not an "alteration of the application papers" requiring a substitute oath or declaration. It is acceptable to print out a copy of the specification prepared using traditional word processing software for the inventor to review as he or she signs the oath or declaration, and then cut and paste from the electronic document to prepare the EFS version of the specification and to submit a scanned copy of the declaration with the EFS submission.

In summary, it is emphasized that the application filed must be the application executed by the applicant and it is improper for anyone, including counsel, to alter, rewrite, or partly fill in any part of the application, including the oath or declaration, after execution of the oath or declaration by the applicant. This provision should particularly be brought to the attention of foreign applicants by their United States counsel since the United States law and practice in this area may differ from that in other countries.

Any changes made in ink in the application or oath prior to signing should be initialed and dated by the applicants prior to execution of the oath or declaration. The Office will require a new oath or declaration if the alterations are not initialed and dated. Form paragraph 6.02.01 may be used to call noninitialed and/or nondated alterations to applicant’s attention.

¶ 6.02.01    Non-Initialed and/or Non-Dated Alterations in Application Papers

The application is objected to because of alterations which have not been initialed and/or dated as is required by 37 CFR 1.52(c). A properly executed oath or declaration which complies with 37 CFR 1.67(a)  and identifies the application by application number and filing date is required.

The signing and execution by the applicant of oaths or declarations in certain continuation or divisional applications may be omitted. See MPEP § 201.06, § 201.07, and § 602.05(a).

For the signature on a reply, see MPEP § 714.01(a) to § 714.01(d).

II.   EXECUTION OF OATH OR DECLARATION ON BEHALF OF INVENTOR

The oath or declaration required by 35 U.S.C. 115  must be signed by all of the actual inventors, except under limited circumstances. 35  U.S.C. 116  provides that joint inventors can sign on behalf of an inventor who cannot be reached or refuses to join. See MPEP § 409.03(a). 35  U.S.C. 117  provides that the legal representative of a deceased or incapacitated inventor can sign on behalf of the inventor. If a legal representative executes an oath or declaration on behalf of a deceased inventor, the legal representative must state that the person is a legal representative and provide the citizenship, residence, and mailing address of the legal representative. See 37 CFR 1.64, MPEP §  409.01 and § 409.02. 35  U.S.C. 118  provides that a party with proprietary interest in the invention claimed in an application can sign on behalf of the inventor, if the inventor cannot be reached or refuses to join in the filing of the application. See MPEP § 409.03(b) and § 409.03(f). The oath or declaration may not be signed by an attorney on behalf of the inventor, even if the attorney has been given a power of attorney to do so. Opinion of Hon. Edward Bates, 10 Op. Atty. Gen. 137 (1861). See also Staeger v. Commissioner of Patents and Trademarks, 189 USPQ 272 (D.D.C. 1976) and In re Striker, 182 USPQ 507 (PTO Solicitor 1973) (In each case, an oath or declaration signed by the attorney on behalf of the inventor was defective because the attorney did not have a proprietary interest in the invention.).

605.04(b)   One Full Given Name Required [R-7]

37 CFR 1.63(a) (2) requires that each inventor be identified by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial in the oath or declaration. For example, if the applicant's full name is "John Paul Doe," either "John P. Doe" or "J. Paul Doe" is acceptable.

Form paragraphs 6.05 (reproduced in MPEP § 602.03) and 6.05.18 may be used to notify applicant that the oath or declaration is defective because the full given name of each inventor has not been adequately stated.

¶ 6.05.18    Full Given Name Is Not Set Forth

The full name of each inventor (family name and at least one given name together with any initial) has not been set forth.

Examiner Note:

This paragraph must be preceded by paragraph 6.05.

A situation may arise where an inventor’s full given name is a singular letter, or is a plurality of singular letters. For example, an inventor’s full given name may be "J. Doe" or "J.P. Doe," i.e., the "J" and the "P" are not initials. In such a situation, identifying the inventor by his or her family name and the singular letter(s) is acceptable, since that is the inventor’s full given name. In order to avoid an objection under 37 CFR1.63 (a)(2), applicant should point out in the oath or declaration that the singular lettering set forth is the inventor’s given name. A statement to this effect, accompanying the filing of the oath or declaration, will also be acceptable. Without such a statement, the examiner should treat the singular letter(s) as an abbreviation of the inventor’s given name and should object to the oath or declaration using the appropriate form paragraphs. Applicant may overcome this objection by filing a responsive statement that the singular letter(s) is/are the inventor’s given name(s).

In an application where the name is typewritten with a middle name or initial, but the signature does not contain such middle name or initial, the typewritten version of the name will be used as the inventor’s name for the purposes of the application and any patent that may issue from the application. No objection should be made in this instance, since the inventor’s signature may differ from his or her legal name. Except for correction of a typographical or transliteration error in the spelling of an inventor’s name, a request to have the name changed from the typewritten version to the signed version or any other corrections in the name of the inventor(s) will not be entertained, unless accompanied by a petition under 37 CFR 1.182  together with an appropriate petition fee. Since amendments are not permitted after the payment of the issue fee (37 CFR 1.312 ), a petition under 37 CFR 1.182  to change the name of the inventor cannot be granted if filed after the payment of the issue fee. The petition should be directed to the attention of the Office of Petitions. Upon granting of the petition, if the application is maintained in paper, the left margin of the original oath or declaration should be marked in red ink "See paper No. ___ for correction of the inventor’s name," and the application should be sent to the Office of Patent Application Processing (OPAP) for correction of its records, unless the application is an application with an application data sheet (e.g., an 09/ series application), in which case the Office of Petitions will correct the Office computer records and print a new bibliographic data sheet. If the application is assigned, it will be forwarded by OPAP or the Office of Petitions to the Assignment Division for a change in the assignment record.

When a typographical or transliteration error in the spelling of an inventor’s name is discovered during pendency of an application, a petition is not required, nor is a new oath or declaration under 37 CFR 1.63  needed. However, applicants are strongly encouraged to use an application data sheet such that any patent to issue will reflect the correct spelling of the inventor’s name. Without an application data sheet with the corrected spelling, any patent to issue is less likely to reflect the correct spelling since the spelling of the inventor’s name is taken from the oath or declaration, or any subsequently filed application data sheet.

If the error is not detected until after the payment of the issue fee, because amendments are not permitted after the payment of the issue fee, either (A) the application must be withdrawn from issue under 37 CFR 1.313 (c)(2) and a request to correct the spelling of the inventor’s name submitted with a request for continued examination (RCE) under 37 CFR 1.114, or (B) a certificate of correction must be filed after the patent issues requesting correction of the spelling of the inventor’s name.

When any correction or change is effected, the Office computer records must be changed. If the application is maintained in paper, the change should be noted on the original oath or declaration by writing in red ink in the left column "See Paper No. __ for inventorship changes." See MPEP §§ 201.03 and 605.04(g). If the application is an Image File Wrapper (IFW) application, after the Office records are corrected, a new bib-data sheet must be printed and added to the IFW.

605.04(c)   Inventor Changes Name [R-7]

In cases where an inventor’s name has been changed after the application has been filed and the inventor desires to change his or her name on the application, he or she must submit a petition under 37 CFR 1.182. Applicants are also strongly encouraged to submit an application data sheet (37 CFR 1.76 ) showing the new name. The petition should be directed to the attention of the Office of Petitions. The petition must include an appropriate petition fee and a statement signed by the inventor setting forth both names and the procedure whereby the change of name was effected, or a copy of the court order.

Since amendments are not permitted after the payment of the issue fee (37 CFR 1.312 ), a petition under 37 CFR 1.182  to change the name of the inventor cannot be granted if filed after the payment of the issue fee.

If an application data sheet is not submitted, the petition may still be granted, but the patent may not reflect the correct spelling of the inventor’s name.

If the petition is granted, if the application is maintained in paper with a file jacket label (i.e., the application is an 08/ or earlier series application), the original declaration must be marked in red ink, in the left margin "See paper No. _ for correction of inventor name" and the application should be sent to the Office of Patent Application Processing (OPAP) for change of name on the file wrapper and in the PALM database. If the petition is granted in an Image File Wrapper (IFW) application or if the application is an 09/ or later series application, the spelling of the inventor’s name should be changed in the Office computer records and a new PALM bib-data sheet should be printed. If the application is assigned, applicant should submit a corrected assignment document along with a cover sheet and the recording fee as set forth in 37 CFR 1.21(h)  to the Assignment Division for a change in the assignment record.

605.04(d)   Applicant Unable to Write

If the applicant is unable to write, his or her mark as affixed to the oath or declaration must be attested to by a witness. In the case of the oath, the notary’s signature to the jurat is sufficient to authenticate the mark.

605.04(e)   May Use Title With Signature

It is permissible for an applicant to use a title of nobility or other title, such as "Dr.", in connection with his or her signature. The title will not appear in the printed patent.

605.04(f)   Signature on Joint Applications - Order of Names [R-7]

The order of names of joint patentees in the heading of the patent is taken from the order in which the typewritten names appear in the original oath or declaration. Care should therefore be exercised in selecting the preferred order of the typewritten names of the joint inventors, before filing, as requests for subsequent shifting of the names would entail changing numerous records in the Office. Since the particular order in which the names appear is of no consequence insofar as the legal rights of the joint applicants are concerned, no changes will be made except when a petition under 37 CFR 1.182  is granted. The petition should be directed to the attention of the Office of Petitions. The petition to change the order of names must be signed by either the attorney or agent of record or all the applicants. Applicants are strongly encouraged to submit an application data sheet showing the new order of inventor names to ensure appropriate printing of the inventor names in any patent to issue. It is suggested that all typewritten and signed names appearing in the application papers should be in the same order as the typewritten names in the oath or declaration. When the Office of Petitions grants a petition to change the order of the names of the inventors, the Office of Petitions will change the order of the names in the Office computer records and print a new bib-data sheet, unless the application is an 08/ or earlier series application, in which case, the application should be sent to the Office of Patent Application Processing (OPAP) for correction on the file wrapper label and the PALM database. Since a change to the order of the inventor’s names is an amendment to the application and amendments are not permitted after the payment of the issue fee (37 CFR 1.312 ), a petition under 37 CFR 1.182  to change the order of the inventor’s name cannot be granted if filed after the payment of the issue fee.

In those instances where the joint applicants file separate oaths or declarations, the order of names is taken from the order in which the several oaths or declarations appear in the application papers unless a different order is requested at the time of filing.

605.04(g)   Correction of Inventorship [R-7]

When a request is granted to add or delete inventors under 37 CFR 1.48, the change should be noted in red ink in the left margin of the original oath or declaration, if the application is maintained in paper. The notation should read "See Paper No. ____ for inventorship changes." For Image File Wrapper (IFW) processing, see IFW Manual. The application (other than 09/ or later series applications) should be sent to the Office of Patent Application Processing (OPAP) for correction on the file wrapper label and the PALM database regarding the inventorship. A brief explanation on an "Application Division Data Base Routing Slip" (available from the Technology Center (TC) technical support staff) should accompany the application file to OPAP. For 09/ or later series applications, the examiner should have the TC’s technical support staff enter the correction in the PALM database and print a new PALM bib-data sheet, which will then be placed in the file wrapper, if correction of the database and printing of a new PALM bib-data sheet was not already done by the Office of Petitions.