7.3 Inventor Oaths, Declarations & Assignments

The legal foundation of United States patent law rests upon the constitutional principle that patents are granted to individual human inventors. The passage of the Leahy-Smith America Invents Act (AIA) significantly modernized inventor oaths, declarations, and assignment recordation procedures under 35 U.S.C. § 115 and MPEP Chapter 300. Understanding who qualifies as an inventor, how to handle unavailable inventors, and how to perfect legal ownership of patent rights is crucial for Patent Bar candidates.

AIA Inventor Oath & Declaration Framework (37 C.F.R. § 1.63)

Under 35 U.S.C. § 115 and 37 C.F.R. § 1.63, each named inventor in a patent application must execute an oath or declaration asserting their inventorship. Under post-AIA practice, while the oath/declaration must eventually be filed, its submission is not required to obtain a filing date and can be deferred until the application is otherwise in condition for allowance (subject to paying a surcharge if filed after a Notice to File Missing Parts under 37 C.F.R. § 1.53(f)).

Mandatory Declaration Content (37 C.F.R. § 1.63(a)-(b))

An AIA-compliant declaration must:

1. Identify the legal name of each inventor;
2. State that the person executing the declaration believes themselves to be an original inventor or an original joint inventor of a claimed invention in the application; and
3. State that the application was made or authorized to be made by the person executing the declaration.

Combined Declaration and Assignment (37 C.F.R. § 1.63(e))

Under AIA provisions, an applicant may combine the inventor declaration and the assignment document into a single combined instrument. To be effective, the document must satisfy both the declaration requirements of § 1.63 and the recordation formalities of 37 C.F.R. § 3.31.

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Joint Inventorship Standards (35 U.S.C. § 116)

When an invention is made by two or more persons jointly, they must apply for a patent jointly pursuant to 35 U.S.C. § 116. Joint inventorship is governed strictly by contribution to the conception of the claimed subject matter.

Conception = The complete mental performance in the mind of the inventor of a definite and permanent idea of the complete and operative invention.

Correction of Inventorship (37 C.F.R. § 1.48)

If an error occurs in naming inventors (misjoinder of an non-inventor or nonjoinder of a true inventor), the inventorship can be corrected by filing a petition under 37 C.F.R. § 1.48. Under AIA rules, correction requires an Application Data Sheet (ADS) identifying the corrected inventorship, a statement from each newly added inventor complying with § 1.63, and the petition fee set forth in § 1.17(q). The requirement to prove lack of deceptive intent was eliminated by the AIA.

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Substitute Statements for Unavailable Inventors (37 C.F.R. § 1.64)

Prior to the AIA, if an inventor refused to sign or could not be found, cumbersome procedures under 35 U.S.C. § 118 were required. Under current 35 U.S.C. § 115(d) and 37 C.F.R. § 1.64, an applicant (such as an assignee, an entity to whom the inventor is obligated to assign, or a party demonstrating a sufficient proprietary interest under 37 C.F.R. § 1.46) may execute a Substitute Statement in lieu of an inventor's declaration.

Permitted Statutory Grounds for Substitute Statement

A substitute statement (Form PTO/AIA/02) is permitted only when a named inventor is:

1. Deceased;
2. Legally Incapacitated;
3. Cannot be found or reached after diligent effort; or
4. Refuses to execute an oath or declaration after a formal request.

Required Contents of Substitute Statement

The substitute statement must identify the unavailable inventor, state the specific statutory ground for execution, identify the person executing the statement, establish their authority (e.g., as assignee or obligated assignee), and acknowledge the severe statutory penalties for willful false statements under 18 U.S.C. § 1001.

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Assignment Recordation & Public Notice (35 U.S.C. § 261 & MPEP 300)

Under 35 U.S.C. § 261, patents and patent applications have the attributes of personal property. The assignment of a patent conveys legal title from the assignor to the assignee. To perfect assignment rights against third parties, assignments must be recorded with the USPTO Assignment Recordation Branch.

Recordation Procedures (37 C.F.R. § 3.11 & § 3.31)

To record an assignment, the applicant must submit:

1. The original or a legible copy of the executed assignment instrument;
2. A completed Assignment Cover Sheet (Form PTO/SB/15) under 37 C.F.R. § 3.31, detailing the assignor/assignee names, execution date, and application or patent number; and
3. The statutory recordation fee set forth in 37 C.F.R. § 3.41 (waived for electronic submissions via EPAS/Assignment Center).

The 3-Month Recording Safe Harbor (35 U.S.C. § 261)

Recording an assignment at the USPTO provides constructive notice to the world. 35 U.S.C. § 261 establishes a vital 3-month statutory safe harbor rule:

"An assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage."

Conflict Resolution Scenarios under 35 U.S.C. § 261

• Scenario A: Inventor executes Assignment 1 to Company A on Jan 1. Company A records on Feb 1 (within 3 months). Inventor fraudulently executes Assignment 2 to Company B for value on March 1. Outcome: Company A wins because its assignment was recorded within the 3-month safe harbor, placing Company B on constructive notice.
• Scenario B: Inventor executes Assignment 1 to Company A on Jan 1. Company A fails to record. Inventor fraudulently executes Assignment 2 to Company B (who pays value without notice) on May 1. Company B records on May 5. Outcome: Company B wins. Company A failed to record within 3 months or prior to Company B's purchase.