Provisions of the America Invents Act that take effect September 16, 2012 will change the requirements for the inventor oath/declaration. While some are touting the new ability of an assignee to file an application, even once these changes take effect an oath/declaration executed by the inventor(s) will be required in the vast majority of patent applications.

Required Statements

The AIA modifies the required language in the inventor oath/declaration through amendments to 35 USC § 115. The current version of the statue requires the inventor to attest

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 [to] state of what country he is a citizen.

As amended by the AIA, the statute will require 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.

as well as

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.

The requirement for statement (1) is new, the language of statement (2) is tweaked, and the statute will no longer require a declaration of citizenship. The AIA also newly permits the required statements to be included in an assignment document.

Timing Requirements

Under current law, an executed inventor oath/declaration can be filed with the application or within the period set forth in a Notice To File Missing Parts or a Notice of Missing Requirements. (Such Notices usually set two month time periods that are extendable for up to five months.) As set forth in 37 CFR § 1.211, an application will not be published until an executed oath/declaration is filed, and substantive examination will not occur until this and other formality requirements are satisfied. Thus, the executed oath/declaration must be provided at the start of the examination process.

The AIA turns this around by requiring the executed oath/declaration to be filed by the end of prosecution, in § 115(f):

(f) TIME FOR FILING.—A notice of allowance under section 151 may be provided to an applicant for patent only if the applicant for patent has filed each required oath or declaration under subsection (a) . . . .

(It could be important for the Examiner to be able to require an executed oath/declaration earlier if inventorship becomes relevant to patentability, such as if there is a publication within the grace period that could be disqualified if it originated from the inventor.)

Exceptions to the Requirement

Like the current law, the AIA permits a “substitute statement” to be filed in lieu of an executed oath/declaration in limited circumstances:

(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).

The statute requires a substitute statement to:

(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.

These circumstances and requirements are similar to those set forth in the current version of 35 USC § 118 and related regulations.

Thus, while new § 118 seems to permit an assignee to file an application, new § 115 appears to still require an executed inventor’s oath or declaration for most applications. The flexibility in the timing requirement could be helpful in circumstances where an inventor is temporarily unavailable, but most applicants will be better off obtaining an executed inventor oath/declaration sooner rather than later.

A Look Back In Time

I visited the National Archives this weekend and noticed this postcard in the gift shop.

This is a copy of the executed oath for the Wright brothers’ 1903 patent application for a Flying Machine.

They swore that they were the “original, first and joint inventors” and that that did “not know” and “did not believe” that the invention

was ever known or used before their invention or discovery thereof, or patented or described in any printed publication in any country before their invention or discovery thereof, or more than two years prior to this application, or in public use or on sale in the United States for more than two years prior to this application; and that no application for patent on said improvement has been filed by them or their representatives or assignee in any country foreign to the United States.

It is interesting to see how similar the language is, and to learn that the statutory bar period used to be two years instead of one!