America Invents Act

Source for information and real time news on implementation of the Leahy-Smith America Invents Act

Inventor’s Oath or Declaration

Overview

Section 4 of the America Invents Act amends 35 U.S.C. §§ 115 and 118. This affects requirements regarding the inventor’s oath or declaration. These changes are quite substantial and reflect Congress’s intent to modify the patent process from a first-to-invent system to a first-inventor-to-file system.

First, the America Invents Act amended 35 U.S.C. § 115 to explicitly provide for an inventor’s declaration to be submitted in place of an inventor’s oath. This change is mainly for clarification, for 35 U.S.C. § 25 gave the Director the authority to allow an inventor’s declaration in lieu of an oath. Second, the inventor is no longer required to state his/her country of citizenship or that he/she believes himself/herself to be the first inventor. Third, if the inventor is deceased, under legal incapacity, or cannot be found or reached after diligent effort, or the inventor is under an obligation to assign the invention but has refused to make the oath or declaration, the new provision allows for the applicant to provide a substitute statement explaining the situation in lieu of the inventor’s oath or declaration.

The America Invents Act allows for examination to take place without the submission of the inventor’s oath or declaration and provides the Office with the authority to delay the required submission of the inventor’s oath or declaration. The Office, however, has indicated it will not exercise this authority and will still require the inventor’s oath or declaration to be submitted before examination of the patent application. The Office feels the inventor’s oath or declaration is needed before examination so that 35 U.S.C. § 102 issues, such as prior use or sale, can be adequately considered. Also, true inventorship needs to be established before a rejection based on double patenting can be issued.

The America Invents Act allows a non-inventor to file an application if the invention is assigned to him/her, the inventor is under an obligation to assign the invention, or the non-inventor shows sufficient proprietary interest. No proof the inventor refused to execute or was unable to be reached will be required (as was the case before the AIA), but an inventor’s oath or declaration (or a substitute statement) will still be required. One final change regarding inventorship allows the Office to grant a patent to the “real party in interest” when the application is filed by a person other than the inventor.

Upcoming Events/Key Dates

Section 4 became effective on September 16, 2012, and applies to any patent applications filed on or after that date. The USPTO published the final rules on August 14, 2012.