602.02 New Oath or Substitute for Original
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Applicant may submit a new inventor’s oath or declaration to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration.
- Some deficiencies or inaccuracies can be corrected with an application data sheet (ADS).
For applications filed on or after September 16, 2012, joint inventors may execute separate oaths or declarations in which only the person executing the oath or declaration is identified if an ADS is filed that provides the required inventor information.
- If such an ADS is not filed, then each oath or declaration must name all of the inventors.
- Each separate oath or declaration by an inventor should be complete in itself.
For applications filed before September 16, 2012, where neither the original oath or declaration, nor the substitute oath or declaration is complete in itself, but each oath or declaration names all of the inventors and the two taken together give all the required data, no further oath or declaration is needed.
602.03 Office Finds the Inventor’s Oath or Declaration Defective
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For example, if the oath does not set forth evidence that the notary was acting within his or her jurisdiction at the time he or she administered the oath, a certificate of the notary that the oath was taken within his or her jurisdiction will correct the deficiency.
602.05 Oath or Declaration in Continuing Applications
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A copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012, even if the oath or declaration identifies the application number of the prior application.
A copy of the oath or declaration from a prior nonprovisional application may be filed in a continuation or divisional application even if the specification for the continuation or divisional application is different from that of the prior application, in that revisions have been made to clarify the text to incorporate amendments made in the prior application, or to make other changes provided the changes do not constitute new matter relative to the prior application.
602.05(a) Oath or Declaration in Continuing Applications Filed On or After September 16, 2012
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Section Frequency Chart
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For example, the inventor’s oath or declaration must include a statement that the application was made or was authorized to be made by the person executing the oath or declaration. Accordingly, a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012.
For continuing applications filed on or after September 16, 2012 under 37 CFR 1.53(b), the inventorship 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.
602.05(b) Oath or Declaration in Continuing Applications Filed Before September 16, 2012
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A continuation or divisional application filed before September 16, 2012 (other than a continuation-in-part (CIP)) may be filed with a copy of the oath or declaration from the prior nonprovisional application.
If an inventor named in a prior application is not an inventor in a continuation or divisional application, the continuation or divisional application may either be filed
- with a copy of an oath or declaration from a prior application and a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application, or
- with a newly executed oath or declaration naming the correct inventive entity.
If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(d) (continued prosecution design application), the request for filing the 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 of the invention being claimed in the continuation or divisional application.
A continuation or divisional application filed under 37 CFR 1.53(b) of a prior application in which a petition (or request) under pre-AIA 37 CFR 1.48 to add an inventor was filed should be filed with a copy of the executed declaration naming the correct inventive entity from the prior application or a newly executed declaration naming the correct inventive entity.
602.06 Non-English Oath or Declaration
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(a) Whenever an individual making an oath or declaration cannot understand English, the oath or declaration must be in a language that such individual can understand and shall state that such individual understands the content of any documents to which the oath or declaration relates.
(b) Unless the text of any oath or declaration in a language other than English is in a form provided by the Patent and Trademark Office or in accordance with PCT Rule 4.17(iv), it must be accompanied by an English translation together with a statement that the translation is accurate, except that in the case of an oath or declaration filed under § 1.63, the translation may be filed in the Office no later than two months from the date applicant is notified to file the translation.
If the individual cannot comprehend the English language, any oath or declaration must be in a language which the individual can comprehend.
- If an individual uses a language other than English for an oath or declaration, the oath or declaration must include a statement that the individual understands the content of any documents to which the oath or declaration relates.
- If the documents are in a language the individual cannot comprehend, the documents may be explained to him or her so that he or she is able to understand them.
The Office will accept a single non-English language oath or declaration where there are joint inventors, of which only some understand English but all understand the non-English language of the oath or declaration.
