New Oath & Declaration Rules at the USPTO
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Written by Stephen Harper, Ph.D. Chair, IP Transactions & Trade Secret Group RatnerPrestia Posted: Sep 10, 2012 @ 7:22 am 
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One of the primary objectives of the America Invents Act (AIA) was to streamline the filing and prosecution of patent applications. Under the AIA, the oath or declaration requirements for applicants have been substantially modified, with assignees now being permitted to apply for patents effective September 16, 2012. Provisions of the AIA (35 USC § 118) allow an assignee, or one to which the inventor is obligated to assign the invention, to make an application for patent. Additionally, a party who has a “sufficient proprietary interest” in the invention may make an application for patent as an agent of the inventor upon “proof of pertinent facts” of such interest.
35 USC § 115(d) permits the “applicant” to make a substitute statement in lieu of an oath/declaration under certain permitted circumstances, such as the death or incapacity of an inventor or an inventor’s refusal to sign an oath/declaration when the inventor is under obligation to assign the invention to the applicant. Also, an “individual” under obligation to assign can now, in an assignment document, make the required oath/declaration and other requirements as instituted by the Director under §§ 115(b) and 115(c).
The USPTO final rules implementing this aspect of the AIA require an assignee or other party having a sufficient proprietary interest in the invention to record documentary evidence of ownership no later than the date the issue fee is paid. Such party must file a petition providing a showing of their “sufficient proprietary interest” and a statement that permitting the party to proceed with the application is “appropriate to preserve the rights of the parties.” The rules permit such party to execute a power of attorney designating a registered practitioner to act on its behalf.
An oath or declaration from each inventor is still required, except under circumstances where an inventor is deceased, legally incapacitated, refuses to sign an oath or declaration, or cannot be located despite diligent efforts. However, the USPTO is discontinuing the practice of routinely requiring proof of facts when an oath or declaration is not executed by each inventor. In lieu of an inventor-executed oath or declaration, an applicant (such as an assignee) may now execute a “substitute statement” with identifying information regarding the inventor (including their last known address) and the person executing the statement as well as the particular permitted circumstances involved (e.g., the inventor cannot be reached). Additionally, the rules significantly relax the current stringent requirements regarding the content of an inventor’s oath or declaration.
Another key departure from past requirements is that the executed oath/declaration need not be submitted until the application is otherwise in condition for allowance, provided the necessary inventor information (legal name, mailing address and residence address of each inventor) is provided in the form of an application data sheet filed with the application or within the response time established by a Notice of Missing Parts/Missing Requirements. Thus, if an application data sheet is timely submitted, examination of the application can proceed without fulfillment of the oath/declaration requirement. Such postponement may, however, affect the term adjustment that a patent issuing from a national phase application might otherwise qualify for in the event the USPTO fails to act on the application in a timely manner.
If you have not taken the time to become familiar with the new oath/declaration rules you should do so soon. These rules represent a substantial departure from current practice and are quite different from the original proposed rules first promulgated by the USPTO and sent out for public comment.
About the Author
Dr. Stephen Harper has over twenty years of intellectual property law experience, having served as patent counsel for two global chemical/consumer product companies. Dr. Harper is the Chair of the RatnerPrestia IP Transactions and Trade Secret practice group and is also a member of the firm's Biotechnology, General Chemistry and Polymers and Pharmaceutical Chemistry Groups. Dr. Harper has particular expertise include organic synthesis, pharmaceutical formulations, polymers, adhesives and coatings, composites, nanomaterials, catalysis, chemical processing and purification, surfactants, and food ingredients. He has evaluated patents and know-how considered for licensing and or acquisition and has taken the lead role in due diligence investigations of third party IP assets and liabilities. Dr. Harper is also experienced in reexamination and other post-grant review proceedings.
Even where the AIA nominally accomplished a helpful end result, the drafting is still incompetent.
There’s no grandfather or transition provision.
The statute/regulation requires that every continuation filed Sunday or after will need a new declaration (except for those applications where you had the foresight to include the new language in your old declarations).
Filing a Substitute Statement can be a big deal if you have an uncooperative inventor that you don’t want to contact, for example, litigation imminent or in progress…
David,
Thanks for the comment. I was wondering what the oath/declaration issue would be with continuations (I presume this also applies to divisionals) filed on/after 9-16-12. Great, another reason why the AIA is the Abominable Inane Act.