602.01    Naming the Inventor; Inventor's Oath or Declaration [R-10.2019]

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 37 CFR 1.64. See MPEP § 602.01(a) for the requirements of an inventor’s oath or declaration in an application filed on or after September 16, 2012. See MPEP § 602.01(b) for the requirements of an original oath or declaration in an application filed before September 16, 2012.

See MPEP § 2109 for the definition of, and requirements for, inventorship and MPEP §§ 602.09 and 2109.01 for information pertaining to joint inventorship.

I.    NAMING INVENTORSHIP IN APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012

[Editor Note: See subsection II., below, for naming inventorship in applications filed before September 16, 2012.]

37 C.F.R. 1.41  Inventorship.

  • (a) An application must include, or be amended to include, the name of the inventor for any invention claimed in the application.
  • (b) The inventorship of a nonprovisional application under 35 U.S.C. 111(a)  is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76  filed before or concurrently with the inventor's oath or declaration. If an application data sheet is not filed before or concurrently with the inventor's oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor's oath or declaration, except as provided for in §§ 1.53(d)(4)  and 1.63(d). Once an application data sheet or the inventor's oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to § 1.48. If neither an application data sheet nor the inventor's oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(b), unless the applicant files a paper, including the processing fee set forth in § 1.17(i), supplying the name or names of the inventor or joint inventors.
  • (c) The inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by § 1.51(c)(1). Once a cover sheet as prescribed by § 1.51(c)(1)  is filed in a provisional application, any correction of inventorship must be pursuant to § 1.48. If a cover sheet as prescribed by § 1.51(c)(1)  is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying the name or names of the inventor or joint inventors.
  • (d) In a nonprovisional application under 35 U.S.C. 111(a)  filed without an application data sheet or the inventor’s oath or declaration, or in a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name and residence of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b)  or § 1.53(c)  are filed.
  • (e) The inventorship of an international application entering the national stage under 35 U.S.C. 371  is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76  filed with the initial submission under 35 U.S.C. 371. Unless the initial submission under 35 U.S.C. 371  is accompanied by an application data sheet in accordance with § 1.76  setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis .
  • (f) The inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). Any correction of inventorship must be pursuant to § 1.48.

An application must include, or be amended to include, the name of the inventor for any invention claimed in the application (the inventorship). See 35 U.S.C. 115(a)  and 37 CFR 1.41(a).

As provided in 37 CFR 1.41(b), the applicant may name the inventorship of a nonprovisional application under 35 U.S.C. 111(a)  in the application data sheet in accordance with 37 CFR 1.76  or in the inventor’s oath or declaration. The inventorship of a nonprovisional application under 35 U.S.C. 111(a)  is the inventor or joint inventors set forth in the application data sheet in accordance with 37 CFR 1.76  filed before or concurrently with the inventor’s oath or declaration. An application data sheet must be signed to comply with 37 CFR 1.76. An unsigned application data sheet is treated as only a transmittal letter. See 37 CFR 1.76(e). If an application data sheet is not filed before or concurrently with the inventor’s oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor’s oath or declaration except as provided in 37 CFR 1.53(d)(4)  (continued prosecution applications for designs) and 37 CFR 1.63(d)  (continuing applications). Once an application data sheet or the inventor’s oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to 37 CFR 1.48(a). If neither an application data sheet nor inventor’s oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to 37 CFR 1.53(b), unless the applicant files a paper, including the processing fee set forth in 37 CFR 1.17(i), supplying the name or names of the inventor or joint inventors.

Applicants who wish to take advantage of the ability to name the inventors in an application data sheet rather than the inventor’s oath or declaration should take care to ensure that an application data sheet under 37 CFR 1.76  that is signed in compliance with 37 CFR 1.33(b)  is present on filing, or at least prior to the filing of any inventor’s oath or declaration in the application. If an inventor’s oath or declaration is filed in the application prior to the filing of an application data sheet under 37 CFR 1.76  that is signed in compliance with 37 CFR 1.33(b), the inventorship named in the inventor’s oath or declaration controls. For example, if an inventor’s oath or declaration naming only inventor "A" is present on filing without an accompanying application data sheet, and a signed application data sheet is filed naming inventors "A" and "B" is subsequently filed in the application, the application will be treated as naming only inventor "A" (the inventor provided in the inventor’s oath or declaration) until the inventorship is corrected under 37 CFR 1.48(a).

As provided in 37 CFR 1.41(c), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1). Once a cover sheet as prescribed by 37 CFR 1.51(c)(1)  is filed in a provisional application, any correction of inventorship must be pursuant to 37 CFR 1.48. If a cover sheet as prescribed by 37 CFR 1.51(c)(1)  is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to 37 CFR 1.53(c), unless the applicant files a paper including the processing fee set forth in 37 CFR 1.17(q), supplying the name or names of the inventor or joint inventors.

37 CFR 1.41(d)  provides that in either a nonprovisional application under 35 U.S.C. 111(a)  filed without an application data sheet or the inventor’s oath or declaration, or in a provisional application filed without a cover sheet as prescribed by 37 CFR 1.51(c)(1), the name and residence of each person believed to be an actual inventor should be provided when the application papers filed pursuant to 37 CFR 1.53(b) or (c)  are filed. Naming the individuals known to be inventors or the persons believed to be the inventors may enable the Office to identify the application, if applicant does not know the application number. Where no inventor(s) is known and applicant cannot name a person believed to be an inventor on filing, the Office requests that an alphanumeric identifier be submitted for the application. The use of very short identifiers should be avoided to prevent confusion. Without supplying at least a unique identifying name the Office may have no ability or only a delayed ability to match any papers submitted after filing of the application and before issuance of an identifying application number with the application file. Any identifier used that is not an inventor’s name should be specific, alphanumeric characters of reasonable length, and should be presented in such a manner that it is clear to application processing personnel what the identifier is and where it is to be found. Failure to apprise the Office of an application identifier such as the names of the inventors or the alphanumeric identifier being used may result in applicants having to resubmit papers that could not be matched with the application and proof of the earlier receipt of such papers where submission was time dependent.

37 CFR 1.41(e)  provides that the inventorship of an international application entering the national stage under 35 U.S.C. 371  is the inventor or joint inventors set forth in the application data sheet in accordance with 37 CFR 1.76  filed with the initial submission under 35 U.S.C. 371. Thus, the applicant in an international application may change inventorship as to the U.S. at the time of national stage entry by simply filing an application data sheet in accordance with 37 CFR 1.76  with the initial submission under 35 U.S.C. 371  naming the inventor or joint inventors. Unless the initial submission under 35 U.S.C. 371  is accompanied by an application data sheet in accordance with 37 CFR 1.76  setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis . 37 CFR 1.41(e)  does not provide the ability to name the inventor or joint inventors via the inventor’s oath or declaration even when an application data sheet in accordance with 37 CFR 1.76  is not provided.

37 CFR 1.41(f)  was added to set forth the inventorship in an international design application designating the United States. Specifically, the inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). 37 CFR 1.41(f)  further provides that any correction of inventorship must be pursuant to 37 CFR 1.48.

II.    NAMING INVENTORSHIP IN AN APPLICATION FILED BEFORE SEPTEMBER 16, 2012

[Editor Note: See subsection I., above, for naming inventorship in applications filed on or after September 16, 2012.]

37 C.F.R. 1.41 (pre‑AIA)  Applicant for patent.

  • (a) A patent is applied for in the name or names of the actual inventor or inventors.
    • (1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63, except as provided for in §§ 1.53(d)(4)  and 1.63(d). If an oath or declaration as prescribed by § 1.63  is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b), unless applicant files a paper, including the processing fee set forth in § 1.17(i), supplying or changing the name or names of the inventor or inventors.
    • (2) The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1). If a cover sheet as prescribed by § 1.51(c)(1)  is not filed during the pendency of a provisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying or changing the name or names of the inventor or inventors.
    • (3) In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63  or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name, residence, and citizenship of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b)  or § 1.53(c)  are filed.
    • (4) The inventorship of an international application entering the national stage under 35 U.S.C. 371  is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis . See § 1.497(d) and (f)  for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis   subsequent to the execution of any declaration filed under PCT Rule 4.17(iv)  (§ 1.48(f)(1)  does not apply to an international application entering the national stage under 35 U.S.C. 371 ).
  • (b) Unless the contrary is indicated the word "applicant" when used in these sections refers to the inventor or joint inventors who are applying for a patent, or to the person mentioned in §§ 1.42, 1.43  or 1.47  who is applying for a patent in place of the inventor.
  • (c) Any person authorized by the applicant may physically or electronically deliver an application for patent to the Office on behalf of the inventor or inventors, but an oath or declaration for the application (§ 1.63 ) can only be made in accordance with § 1.64.
  • (d) A showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.

Pre-AIA 37 CFR 1.41(a)(1)  defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as provided for in 37 CFR 1.53(d)(4)  and pre-AIA 37 CFR 1.63(d).

For applications filed prior to September 16, 2012, where the first-filed executed oath or declaration sets forth an inventive entity which is different from the inventive entity initially set forth at the time of filing of the application, the actual inventorship of the application will be taken from the executed oath or declaration. See Pre-AIA 37 CFR 1.41(a)(1).

As provided in pre-AIA 37 CFR 1.41(a)(2), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1).

See MPEP §§ 602.08(b) and 605.02 for additional information.

III.    CORRECTION OF INVENTORSHIP

For correction of inventorship, see MPEP § 602.01(c) et seq. Note that requests to correct the inventorship under 37 CFR 1.48  filed on or after September 16, 2012 (regardless of the application filing date) are treated by OPAP. If the request is granted, OPAP will correct the Office records and send a corrected filing receipt.

602.01(a)    Inventor’s Oath or Declaration in Application Filed On or After September 16, 2012 [R-10.2019]

[Editor Note: See MPEP § 602.01(b) for information pertaining to an inventor's oath or declaration in applications filed before September 16, 2012.]

35 U.S.C. 115  Inventor’s oath or declaration.

  • (a) NAMING THE INVENTOR; INVENTOR’S OATH OR DECLARATION.—An application for patent that is filed under section 111(a)  or commences the national stage under section 371  shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.
  • (b) REQUIRED STATEMENTS.—An oath or declaration under subsection (a) shall contain statements 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.
  • (c) ADDITIONAL REQUIREMENTS.—The Director may specify additional information relating to the inventor and the invention that is required to be included in an oath or declaration under subsection (a).
  • (d) SUBSTITUTE STATEMENT.—
    • (1) IN GENERAL.—In lieu of executing an oath or declaration under subsection (a), the applicant for patent may provide a substitute statement under the circumstances described in paragraph (2) and such additional circumstances that the Director may specify by regulation.
    • (2) PERMITTED CIRCUMSTANCES.—A substitute statement under paragraph (1) is permitted with respect to any individual who—
      • (A) is unable to file the oath or declaration under subsection (a) because the individual—
        • (i) is deceased;
        • (ii) is under legal incapacity; or
        • (iii) cannot be found or reached after diligent effort; or
      • (B) is under an obligation to assign the invention but has refused to make the oath or declaration required under subsection (a).
    • (3) CONTENTS.—A substitute statement under this subsection shall—
      • (A) identify the individual with respect to whom the statement applies;
      • (B) set forth the circumstances representing the permitted basis for the filing of the substitute statement in lieu of the oath or declaration under subsection (a); and
      • (C) contain any additional information, including any showing, required by the Director.
  • (e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT OF RECORD.—An individual who is under an obligation of assignment of an application for patent may include the required statements under subsections (b) and (c) in the assignment executed by the individual, in lieu of filing such statements separately.
  • (f) TIME FOR FILING.—The applicant for patent shall provide each required oath or declaration under subsection (a), substitute statement under subsection (d), or recorded assignment meeting the requirements of subsection (e) no later than the date on which the issue fee for the patent is paid.
  • (g) EARLIER-FILED APPLICATION CONTAINING REQUIRED STATEMENTS OR SUBSTITUTE STATEMENT.—
    • (1) EXCEPTION.—The requirements under this section shall not apply to an individual with respect to an application for patent in which the individual is named as the inventor or a joint inventor and that claims the benefit under section 120, 121, 365(c), or 386(c)  of the filing of an earlier-filed application, if—
      • (A) an oath or declaration meeting the requirements of subsection (a) was executed by the individual and was filed in connection with the earlier-filed application;
      • (B) a substitute statement meeting the requirements of subsection (d) was filed in connection with the earlier filed application with respect to the individual; or
      • (C) an assignment meeting the requirements of subsection (e) was executed with respect to the earlier-filed application by the individual and was recorded in connection with the earlier-filed application.
    • (2) COPIES OF OATHS, DECLARATIONS, STATEMENTS, OR ASSIGNMENTS.—Notwithstanding paragraph (1), the Director may require that a copy of the executed oath or declaration, the substitute statement, or the assignment filed in connection with the earlier-filed application be included in the later-filed application.
  • (h) SUPPLEMENTAL AND CORRECTED STATEMENTS; FILING ADDITIONAL STATEMENTS.—
    • (1) IN GENERAL.—Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement at any time. If a change is made in the naming of the inventor requiring the filing of 1 or more additional statements under this section, the Director shall establish regulations under which such additional statements may be filed.
    • (2) SUPPLEMENTAL STATEMENTS NOT REQUIRED.—If an individual has executed an oath or declaration meeting the requirements of subsection (a) or an assignment meeting the requirements of subsection (e) with respect to an application for patent, the Director may not thereafter require that individual to make any additional oath, declaration, or other statement equivalent to those required by this section in connection with the application for patent or any patent issuing thereon.
    • (3) SAVINGS CLAUSE.—A patent shall not be invalid or unenforceable based upon the failure to comply with a requirement under this section if the failure is remedied as provided under paragraph (1).
  • (i) ACKNOWLEDGMENT OF PENALTIES.—Any declaration or statement filed pursuant to this section shall contain an acknowledgment that any willful false statement made in such declaration or statement is punishable under section 1001 of title 18  by fine or imprisonment of not more than 5 years, or both.

37 C.F.R. 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.
  • (d)
    • (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  .
  • (e)
    • (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.

I.    IDENTITY OF INVENTOR(S), APPLICATION, AND REQUIRED STATEMENTS

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 37 CFR 1.64  . See 37 CFR 1.63(a)  and 35 U.S.C. 115. An oath or declaration 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 the person executing the oath or declaration believes the named inventor or joint inventors 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 authorized to be made by the person executing the oath or declaration. Items (3) and (4) above are requirements of 35 U.S.C. 115(a) and (b).

A.    Inventor Name And Mailing Address

The requirements that an oath or declaration must identify the inventor or joint inventor executing the oath or declaration by his or her legal name and identify the application to which it is directed are necessary for the Office to ensure compliance with the requirement of 35 U.S.C. 115(a). Specifically, 35 U.S.C. 115(a)  requires that each individual who is the inventor or a joint inventor of a claimed invention in an application for patent has executed an oath or declaration in connection with the application (except as provided for in 35 U.S.C. 115 ). See MPEP § 602.08(b) for additional information pertaining to inventor names.

Unless such information is supplied in an application data sheet in accordance with 37 CFR 1.76, the oath or declaration must also identify: (1) each inventor by his or her legal name; (2) a mailing address where the inventor or each joint inventor customarily receives mail; and (3) a residence for each inventor or joint inventor who lives at a location which is different from where the inventor or joint inventor customarily receives mail. See 37 CFR 1.63(b).

For nonprovisional international design applications, 37 CFR 1.1021(d)(3)  provides that the requirement in 37 CFR 1.63(b)  to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, will be considered satisfied by the presentation of such information in the international design application prior to international registration.

See also MPEP § 602.08(a) for additional details regarding inventor bibliographic information.

If applicant files an application data sheet (ADS) that identifies each inventor by his or her legal name, in accordance with 37 CFR 1.76, the applicant is not required to name each inventor in a single oath or declaration. This permits each joint inventor to execute an oath or declaration stating only that the joint inventor executing the oath or declaration is an original joint inventor of the claimed invention in the application for which the oath or declaration is being submitted. To be in accordance with 37 CFR 1.76, the application data sheet must be signed in compliance with 37 CFR 1.33(b). An unsigned application data sheet will be treated only as a transmittal letter.

B.    Identification Of Application

See MPEP § 602.08(c) for the minimum information necessary to identify the application to which an oath or declaration under 37 CFR 1.63  is directed.

C.    Required Statements

An oath or declaration under 37 CFR 1.63  in an application filed on or after September 16, 2012 is no longer required to contain the "reviewed and understands" clause and "duty to disclose" clause of pre-AIA 37 CFR 1.63(b)(2) and (b)(3). However, 37 CFR 1.63  still requires that a person executing an oath or declaration review and understand the contents of the application, and be aware of the duty to disclose under 37 CFR 1.56. See 37 CFR 1.63(c). 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.

II.    ASSIGNMENT-STATEMENT AS OATH OR DECLARATION

37 CFR 1.63(e)  implements the provisions of 35 U.S.C. 115(e). An assignment may also serve as an oath or declaration required by 37 CFR 1.63  if the assignment: (1) includes the information and statements required under 37 CFR 1.63(a) and (b); and (2) a copy of the assignment is recorded as provided for in 37 CFR part 3. The assignment, including the information and statements required under 37 CFR 1.63(a) and (b), must be executed by the individual who is under the obligation of assignment. Any reference to an oath or declaration includes an assignment as provided for in 37 CFR 1.63(e).

Applicants should be mindful that 37 CFR 3.31  requires a conspicuous indication, such as by use of a check-box on the assignment cover sheet, to alert the Office that an assignment submitted with an application is being submitted for a dual purpose: recording in the assignment database, such as to support a power of attorney, and for use in the application as the inventor’s oath or declaration. Assignments cannot be recorded unless an application number is provided against which the assignment is to be recorded. When filing an application on paper, if an assignment is submitted for recording along with the application, the assignment is separated from the paper application after the application is assigned an application number and is forwarded to the Assignment Recordation Branch for recording in its database. The assignment does not become part of the application file. If the applicant indicates that an assignment-statement is also an oath or declaration, the Office will scan the assignment into the Image File Wrapper (IFW) file for the application before forwarding it to the Assignment Recordation Branch.

For EFS-Web filing of application papers, EFS-Web does not accept assignments for recording purposes when filing an application. Assignments submitted via EFS-Web will be made of record in the application, and will not be forwarded to the Assignment Recordation Branch for recordation by the Office. Recording of assignments may only be done electronically in EPAS (Electronic Patent Assignment System). If an applicant files the assignment-statement for recording via EPAS and utilizes the check-box, the Office will place a copy of the assignment-statement in the application file.

III.    EXECUTION OF INVENTOR’S OATH OR DECLARATION

With respect to an application naming more than one inventor, any reference to the inventor’s oath or declaration in 37 CFR chapter I means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless it is otherwise clear from the context. Thus, any requirement in 37 CFR chapter I for the inventor’s oath or declaration with respect to an application naming more than one inventor is met if an oath or declaration under 37 CFR 1.63, an assignment-statement under 37 CFR 1.63(e), or a substitute statement under 37 CFR 1.64  executed by or with respect to each joint inventor is filed. See 37 CFR 1.63(f).

An oath or declaration under 37 CFR 1.63, including the assignment-statement provided for in 37 CFR 1.63(e), must be executed (i.e., signed) in accordance either with 37 CFR 1.66, or with an acknowledgement 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. See 37 CFR 1.63(g)  and 35 U.S.C. 115(i). The inventor’s oath or declaration must be executed (i.e., signed) by the inventor or the joint inventors, unless the inventor’s oath or declaration is a substitute statement under 37 CFR 1.64, which must be signed by the applicant, or an assignment-statement under 37 CFR 1.63(e), which must be signed by the inventor who is under the obligation of assignment of the patent application.

See MPEP § 602.08(b) for additional information regarding the execution of the inventor’s oath or declaration.

See 35 U.S.C. 115(g), 37 CFR 1.63(d)  and MPEP § 602.05(a) regarding the use of copies of inventor’s oaths or declarations in continuing applications.

35 U.S.C. 115(h)(1)  provides that any person making a statement under this section may at any time "withdraw, replace, or otherwise correct the statement at any time." 37 CFR 1.63(h)  provides that 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.

IV.    FORMS

Forms PTO/AIA/01 through PTO/AIA/09 may be used when submitting the inventor’s oath or declaration in an application filed on or after September 16, 2012. These forms and an "AIA Inventor's Oath or Declaration Quick Reference Guide" are available on the USPTO website at www.uspto.gov/patent/forms/forms-patent- applications-filed-or-after-september-16-2012.

602.01(b)    Inventor’s Oath or Declaration in Application Filed Before September 16, 2012 [R-10.2019]

[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 C.F.R. 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.
  • (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 is a joint inventor together with each of the other inventors indicating them by name. This may be done by stating that he or she does verily believe himself or herself to be 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 § 602.08 et 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 and PTO/SB/01A may be used when submitting the inventor’s oath or declaration in an application filed before September 16, 2012.

Declaration for Utility or Design Patent Application - (37 CFR 1.63)
DECLARATION - Utility or Design Patent Application
DECLARATION - Utility or Design Patent Application
Privacy Act Statement
DECLARATION (37 CFR 1.63) FOR UTILITY OR DESIGN APPLICATION USING AN APPLICATION DATA SHEET (37 CFR 1.76)

602.01(c)    Correction of Inventorship, Name of Inventor, and Order of Names in an Application [R-10.2019]

I.    NAMING INVENTORSHIP

The Office will issue a filing receipt listing the inventors identified at the time of filing of the application even if the application was filed without an executed oath or declaration. See MPEP § 602.01 for information specific to naming inventorship. Correction of inventorship may be requested under 37 CFR 1.48  or may be obtained by filing a continuing application under 37 CFR 1.53.

See MPEP § 601.01(a), subsection II for information regarding completion of an nonprovisional application subsequent to the filing date pursuant to 37 CFR 1.53(f)  (e.g., because the inventor’s oath or declaration was not present on filing date). See MPEP § 601.01(b) for information regarding completion of a provisional application subsequent to the filing date.

II.    REQUESTS FOR CORRECTION OF INVENTORSHIP UNDER 37 CFR 1.48

Correction of inventorship in an application is permitted by amendment under 35 U.S.C. 116, which is implemented by 37 CFR 1.48.

For requests for correction of inventorship filed under 37 CFR 1.48(a) or (d)  on or after September 16, 2012 (without regard to the filing date of the application), see MPEP § 602.01(c)(1).

For requests filed on or after September 16, 2012, under 37 CFR 1.48(f)  to correct or update inventor names, or to change the order of inventor names, see MPEP § 602.01(c)(2). Note that requests under 37 CFR 1.48  filed on or after September 16, 2012 will be handled by the Office of Patent Application Processing (OPAP).

For requests for correction of inventorship filed before September 16, 2012 (without regard to the filing date of the application), see MPEP § 602.01(c)(3) in Revision 08.2017 of the Ninth Edition of the MPEP, published in January 2018.

For additional information pertaining to correction of inventorship in applications that name joint inventors, see MPEP § 602.09.

37 CFR 1.48  does not apply to reissue applications as is noted in its title, whether correcting an inventorship error in the patent to be reissued or in the reissue application itself. Where an error in inventorship in a patent is to be corrected via a reissue application, see 37 CFR 1.171 - 37 CFR 1.175  and MPEP § 1412.04. Where such an error is to be corrected via a certificate of correction under 37 CFR 1.324, see MPEP § 1481. See 37 CFR 1.48(i)  for correction of inventorship in interferences and contested cases before the Patent Trial and Appeal Board.

Although 37 CFR 1.48  does not contain a diligence requirement for filing the request, once an inventorship error is discovered, timeliness requirements under 37 CFR 1.116  and 37 CFR 1.312  apply.

A request under 37 CFR 1.48  will not be required:

(A)Where an application is to issue with the correct inventorship based on the allowed claims even though the application may have been filed with an incorrect inventorship based on the claims as originally submitted; and

(B)Where a court has issued an order under 35 U.S.C. 256  for correction of the inventorship of a patent. Such request should be submitted directly to the Certificate of Correction Division along with form PTO/SB/44 (see MPEP § 1485).

III.    CORRECTION OF INVENTORSHIP BY FILING CONTINUING APPLICATION

Correction of inventorship may also be obtained by the filing of a continuing application under 37 CFR 1.53  without the need for filing a request under 37 CFR 1.48, although it should be noted that the requirements for a request under 37 CFR 1.48  filed on or after September 16, 2012 are minimal.

35 U.S.C. 120  permits a continuing application to claim the benefit of the filing date of a copending, previously filed, parent application provided there is inventorship overlap between the continuing application and the parent application. If the inventive entity of a continuing application includes an inventor named in the parent application, the inventorship overlap required by 35 U.S.C. 120  is met. However, refiling to change inventorship could result in the loss of a benefit claim if there is no overlap in inventorship between the two applications.

Note that a correction of inventorship may result in the loss of power of attorney. For applications filed on or after September 16, 2012, 37 CFR 1.32(e)  provides that if the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to 37 CFR 1.48  does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the 37 CFR 1.48  request. This provision does not preclude a practitioner from acting in a representative capacity pursuant to 37 CFR 1.34, if applicable.

For applications filed on or after September 16, 2012, the inventorship in the continuing application is the inventor or joint inventors specified in the ADS filed before or with the copy of the inventor’s oath or declaration from the earlier-filed application. If an ADS is not filed before or with the copy of the inventor’s oath or declaration, then the inventorship is the inventorship in the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement, signed by a 37 CFR 1.33(b)  party, stating the name of each inventor in the continuing application. Any new joint inventor named in the continuing application must execute an inventor’s oath or declaration, except as provided for in 37 CFR 1.64.

602.01(c)(1)    Correction of Inventorship in an Application – Request Filed On or After September 16, 2012 [R-10.2019]

[Editor Note: See MPEP § 602.01(c)(3) in Revision 08.2017 of the Ninth Edition of the MPEP, published in January 2018 for information about correction of inventorship for requests filed before September 16, 2012.]

37 C.F.R. 1.48  Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application.

  • (a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41  must include:
    • (1) An application data sheet in accordance with § 1.76  that identifies each inventor by his or her legal name; and
    • (2) The processing fee set forth in § 1.17(i).
  • (b) Inventor's oath or declaration for added inventor: An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.
  • (c) Any request to correct or change the inventorship under paragraph (a) of this section filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in § 1.17(d), unless the request is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.
  • (d) Provisional application. Once a cover sheet as prescribed by § 1.51(c)(1)  is filed in a provisional application, any request to correct or change the inventorship must include:
    • (1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and
    • (2) The processing fee set forth in § 1.17(q).
  • (e) Additional information may be required. The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.

*****

Requests for correction of inventorship under 37 CFR 1.48  filed on or after September 16, 2012 will be handled by the Office of Patent Application Processing (OPAP).

I.    37 CFR 1.48(a) - NONPROVISIONAL APPLICATION

Under 37 CFR 1.48(a), an applicant may submit a request for correction of inventorship in a nonprovisional patent application once the inventorship has been established. See MPEP § 602.08(b), subsection III, for details regarding naming inventorship in an application filed on or after September 16, 2012.

A request to correct the inventorship filed under 37 CFR 1.48(a)  should identify the inventorship change and must be accompanied by a signed application data sheet (ADS) including the legal name, residence, and mailing address of the inventor or each actual joint inventor (see 37 CFR 1.76(b)(1) ) and the processing fee set forth in 37 CFR 1.17(i). The application data sheet submitted with a request under 37 CFR 1.48(a)  must identify the information being changed with underlining for insertions and strike-through or brackets for text removed.

37 CFR 1.48(a)  enables an applicant to correct inventorship where an application sets forth improper inventorship as well as where the prosecution of an application results in the need to add or delete one or more inventors (e.g., due to the addition or deletion of claims or an amendment to the claims).

II.    37 CFR 1.48(b) – INVENTOR’S OATH OR DECLARATION FOR ADDED INVENTOR

37 CFR 1.48(b)  provides that an oath or declaration as required by 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.

For applications filed on or after September 16, 2012, the oath or declaration required by 37 CFR 1.48(b)  must comply with 37 CFR 1.63  in effect for applications filed on or after September 16, 2012. See MPEP § 602.01(a). A substitute statement in compliance with 37 CFR 1.64  is only available for applications filed on or after September 16, 2012. See MPEP § 604 for the requirements for substitute statements.

For applications filed before September 16, 2012, the oath or declaration required by 37 CFR 1.48(b)  for an added inventor must comply with pre-AIA 37 CFR 1.63  which remains in effect for applications filed before September 16, 2012. See MPEP § 602.01(b).

III.    37 CFR 1.48(c) – REQUEST FILED AFTER OFFICE ACTION ON THE MERITS

37 CFR 1.48(c)  provides that the fee set forth in 37 CFR 1.17(d)  (in addition to the processing fee) is required when requests under 37 CFR 1.48  are filed after the Office action on the merits has been given or mailed in the application. However, the fee will not be required when inventors are deleted if the request to correct or change inventorship is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.

IV.    37 CFR 1.48(d) – PROVISIONAL APPLICATION

37 CFR 1.48(d)  provides for correcting inventorship in provisional applications. Under 37 CFR 1.41(c), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1). Once a cover sheet is filed in a provisional application, any correction of inventorship must be pursuant to 37 CFR 1.48. If a cover sheet as prescribed by 37 CFR 1.51(c)(1)  is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant 37 CFR 1.53(c), unless the applicant files a paper, including the processing fee set forth in 37 CFR 1.17(q), supplying the name or names of the inventor or joint inventors.

37 CFR 1.48(d)  provides a procedure for adding or deleting or correcting or updating the name of an inventor in a provisional application. 37 CFR 1.48(d)  requires that the submission include: (1) a request, signed by a party set forth in 37 CFR 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and (2) the fee set forth in 37 CFR 1.17(q). When an inventor is being added, applicants should also file a corrected application data sheet or a new cover sheet providing the residence of all inventors. See 37 CFR 1.51(c). For provisional applications, it may not be necessary to correct the inventorship under 37 CFR 1.48(d)  unless there would be no overlap of inventors upon the filing of the nonprovisional application with the correct inventorship. The need to correct the inventorship in any U.S. nonprovisional or provisional application may in part be dependent upon whether a foreign filing under the Paris Convention will occur subsequent to the U.S. filing. See MPEP § 213.

V.    FORM TO REQUEST CORRECTION OR CHANGE TO INVENTORSHIP

The Office has a form PTO/AIA/40 to request correction in a patent application (other than a reissue application) relating to inventorship, an inventor name, or order of names. The form is reproduced below and is also available on www.uspto.gov.

Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application - page 1
Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application - page 2
Request for correction in a patent application relating to inventorship or an inventor name, or order of names, other than in a reissue application - page 3

602.01(c)(2)    Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012 [R-10.2019]

[Editor Note: See MPEP § 602.01(c)(3) in Revision 08.2017 of the Ninth Edition of the MPEP, published in January 2018 for a discussion of the requirements for requests to correct or update inventor name filed before September 16, 2012.]

37 C.F.R. 1.48  Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.

*****

  • (f) Correcting or updating the name of an inventor: Any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include:
    • (1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name in the desired order; and
    • (2) The processing fee set forth in § 1.17(i).

*****

The change in the order of the names of inventors in a provisional application is not provided for since provisional applications do not become application publications or patents.

As of September 16, 2012, it is no longer necessary to have distinct procedures for correction of inventorship and for correction to the name of an inventor or to the order of the names of the inventors. 37 CFR 1.48(f)  permits an applicant to change or update a particular inventor’s name if his/her legal name has changed (e.g., due to marriage), or an inventor’s name contains an error (e.g., typographical or transliteration mistake or the reversal of family or given names) and allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent). 37 CFR 1.48(f)  specifically provides that any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include: (1) an application data sheet in accordance with 37 CFR 1.76  that identifies each inventor by his or her legal name in the desired order (identifying the information that is being changed as required by 37 CFR 1.76(c)(2) ); and (2) the processing fee set forth in 37 CFR 1.17(i). In addition to the corrected application data sheet, the request should also identify the desired inventor name change.

See MPEP § 602.01(c)(1) for a copy of form PTO/AIA/40 that may be used to correct or update in inventor’s name or change the order of names in applications (other than reissue applications).

602.01(c)(3)    [Reserved]