MPEP 602: Difference between revisions

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==[[MPEP 602|602 Original Oath or Declaration]]==
==[[MPEP 602|602 Original Oath or Declaration]]==


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35 U.S.C. 25. Declaration in lieu of oath.
{{Statute|35 U.S.C. 25. Declaration in lieu of oath.}}
 
(a) The Director may by rule prescribe that any document to  
(a)The Director may by rule prescribe that any document to  
be filed in the Patent and Trademark Office and which is required  
be filed in the Patent and Trademark Office and which is required  
by any law, rule, or other regulation to be under oath may be subscribed  
by any law, rule, or other regulation to be under oath may be subscribed  
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required.
required.


(b)Whenever such written declaration is used, the document  
(b) Whenever such written declaration is used, the document  
must warn the declarant that willful false statements and the like  
must warn the declarant that willful false statements and the like  
are punishable by fine or imprisonment, or both (18 U.S.C. 1001).
are punishable by fine or imprisonment, or both (18 U.S.C. 1001).
|}


35 U.S.C. 26. Effect of defective execution.


{{Statute|35 U.S.C. 26. Effect of defective execution.}}
Any document to be filed in the Patent and Trademark Office  
Any document to be filed in the Patent and Trademark Office  
and which is required by any law, rule, or other regulation to be  
and which is required by any law, rule, or other regulation to be  
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the Director despite a defective execution, provided a properly  
the Director despite a defective execution, provided a properly  
executed document is submitted within such time as may be prescribed.
executed document is submitted within such time as may be prescribed.
|}




35 U.S.C. 115. Oath of applicant.
{{Statute|35 U.S.C. 115. Oath of applicant.}}
 
The applicant shall make oath that he believes himself to be the  
The applicant shall make oath that he believes himself to be the  
original and first inventor of the process, machine, manufacture,  
original and first inventor of the process, machine, manufacture,  
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authorized to perform notarial functions pursuant to section 1750  
authorized to perform notarial functions pursuant to section 1750  
of the Revised Statutes, as amended (22 U.S.C. 4221).
of the Revised Statutes, as amended (22 U.S.C. 4221).
|}


37 CFR 1.63. Oath or declaration.


(a)An oath or declaration filed under §
{{Statute|37 CFR 1.63. Oath or declaration.}}
(a) An oath or declaration filed under § 1.51(b)(2) as a part of a nonprovisional application must:
1.51(b)(2) as a part  
of a nonprovisional application must:


(1)Be executed, i.e., signed, in accordance with either §  
<p style="padding-left: +20px;">(1) Be executed, i.e., signed, in accordance with either § 1.66 or § 1.68. There is no minimum age for a person to be qualified to sign, but the person must be competent to sign, i.e., understand the document that the person is signing;</p>
1.66 or § 1.68. There is no minimum age for a person to be qualified  
to sign, but the person must be competent to sign, i.e., understand  
the document that the person is signing;


(2)Identify each inventor by full name, including the  
<p style="padding-left: +20px;">(2) Identify each inventor by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial;</p>
family name, and at least one given name without abbreviation  
together with any other given name or initial;


(3)Identify the country of citizenship of each inventor;  
<p style="padding-left: +20px;">(3) Identify the country of citizenship of each inventor; and</p>
and


(4)State that the person making the oath or declaration  
<p style="padding-left: +20px;">(4) State that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.</p>
believes the named inventor or inventors to be the original and  
first inventor or inventors of the subject matter which is claimed  
and for which a patent is sought.


(b)In addition to meeting the requirements of paragraph (a)  
(b) In addition to meeting the requirements of paragraph (a)  
of this section, the oath or declaration must also:
of this section, the oath or declaration must also:


(1)Identify the application to which it is directed;
<p style="padding-left: +20px;">(1) Identify the application to which it is directed;</p>


(2)State that the person making the oath or declaration  
<p style="padding-left: +20px;">(2) State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims, as amended by any amendment specifically referred to in the oath or declaration; and</p>
has reviewed and understands the contents of the application,  
including the claims, as amended by any amendment specifically  
referred to in the oath or declaration; and


(3)State that the person making the oath or declaration  
<p style="padding-left: +20px;">(3) State that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.</p>
acknowledges the duty to disclose to the Office all information  
known to the person to be material to patentability as defined in §  
1.56.


(c)Unless such information is supplied on an application  
(c) Unless such information is supplied on an application data sheet in accordance with § 1.76, the oath or declaration must  
data sheet in accordance with § 1.76, the oath or declaration must  
also identify:
also identify:


(1)The mailing address, and the residence if an inventor  
<p style="padding-left: +20px;">(1) The mailing address, and the residence if an inventor lives at a location which is different from where the inventor customarily receives mail, of each inventor; and</p>
lives at a location which is different from where the inventor customarily  
 
receives mail, of each inventor; and
<p style="padding-left: +20px;">(2) Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made pursuant to § 1.55, and any foreign application having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.</p>


(2)Any foreign application for patent (or inventor’s certificate)
(d)
for which a claim for priority is made pursuant to § 1.55,
and any foreign application having a filing date before that of the
application on which priority is claimed, by specifying the application
number, country, day, month, and year of its filing.


(d)(1)A newly executed oath or declaration is not required  
<p style="padding-left: +20px;">(1) A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:</p>
under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional  
application, provided that:


(i)The prior nonprovisional application contained an  
<p style="padding-left: +40px;">(i) The prior nonprovisional application contained an  
oath or declaration as prescribed by paragraphs (a) through (c) of  
oath or declaration as prescribed by paragraphs (a) through (c) of  
this section;
this section;</p>


(ii)The continuation or divisional application was filed  
<p style="padding-left: +40px;">(ii) The continuation or divisional application was filed  
by all or by fewer than all of the inventors named in the prior  
by all or by fewer than all of the inventors named in the prior  
application;
application;</p>
 
 
 
 


(iii)The specification and drawings filed in the continuation  
<p style="padding-left: +40px;">(iii) The specification and drawings filed in the continuation  
or divisional application contain no matter that would have  
or divisional application contain no matter that would have  
been new matter in the prior application; and
been new matter in the prior application; and</p>


(iv)A copy of the executed oath or declaration filed in the  
<p style="padding-left: +40px;">(iv) A copy of the executed oath or declaration filed in the  
prior application, showing the signature or an indication thereon  
prior application, showing the signature or an indication thereon  
that it was signed, is submitted for the continuation or divisional  
that it was signed, is submitted for the continuation or divisional  
application.
application.</p>


(2)The copy of the executed oath or declaration submitted  
<p style="padding-left: +20px;">(2) The copy of the executed oath or declaration submitted  
under this paragraph for a continuation or divisional application  
under this paragraph for a continuation or divisional application  
must be accompanied by a statement requesting the deletion  
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 name or names of the person or persons who are not inventors  
in the continuation or divisional application.
in the continuation or divisional application.</p>


(3)Where the executed oath or declaration of which a  
<p style="padding-left: +20px;">(3) Where the executed oath or declaration of which a  
copy is submitted for a continuation or divisional application was  
copy is submitted for a continuation or divisional application was  
originally filed in a prior application accorded status under §
originally filed in a prior application accorded status under § 1.47,  
1.47,  
the copy of the executed oath or declaration for such prior application  
the copy of the executed oath or declaration for such prior application  
must be accompanied by:
must be accompanied by:</p>


(i)A copy of the decision granting a petition to  
<p style="padding-left: +40px;">(i) A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an  
accord §
application accorded status under § 1.47 of which the continuation  
or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and</p>
1.47 status to the prior application, unless all inventors or  
legal representatives have filed an oath or declaration to join in an  
application accorded status under §
1.47 of which the continuation  
or divisional application claims a benefit under 35  
U.S.C. 120,  
121, or 365(c); and


(ii)If one or more inventor(s) or legal representative(
<p style="padding-left: +40px;">(ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be  
s) who refused to join in the prior application or could not be  
found or reached has subsequently joined in the prior application  
found or reached has subsequently joined in the prior application  
or another application of which the continuation or divisional  
or another application of which the continuation or divisional  
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U.S.C. 120, 121, or 365(c), a  
U.S.C. 120, 121, or 365(c), a  
copy of the subsequently executed oath(s) or declaration(s) filed  
copy of the subsequently executed oath(s) or declaration(s) filed  
by the inventor or legal representative to join in the application.
by the inventor or legal representative to join in the application.</p>


(4)Where the power of attorney or correspondence  
<p style="padding-left: +20px;">(4) Where the power of attorney or correspondence  
address was changed during the prosecution of the prior application,  
address was changed during the prosecution of the prior application,  
the change in power of attorney or correspondence address  
the change in power of attorney or correspondence address  
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Otherwise, the Office may not recognize in the continuation or  
Otherwise, the Office may not recognize in the continuation or  
divisional application the change of power of attorney or correspondence  
divisional application the change of power of attorney or correspondence  
address during the prosecution of the prior application.
address during the prosecution of the prior application.</p>


(5)A newly executed oath or declaration must be filed in  
<p style="padding-left: +20px;">(5) A newly executed oath or declaration must be filed in  
a continuation or divisional application naming an inventor not  
a continuation or divisional application naming an inventor not  
named in the prior application.
named in the prior application.</p>


(e)A newly executed oath or declaration must be filed in  
(e) A newly executed oath or declaration must be filed in  
any continuation-in-part application, which application may name  
any continuation-in-part application, which application may name  
all, more, or fewer than all of the inventors named in the prior  
all, more, or fewer than all of the inventors named in the prior  
application.
application.
|}


37 CFR 1.68. Declaration in lieu of oath.


{{Statute|37 CFR 1.68. Declaration in lieu of oath.}}
Any document to be filed in the Patent and Trademark Office  
Any document to be filed in the Patent and Trademark Office  
and which is required by any law, rule, or other regulation to be  
and which is required by any law, rule, or other regulation to be  
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that all statements made on information and belief are believed to  
that all statements made on information and belief are believed to  
be true.  
be true.  
|}


18 U.S.C. 1001. Statements or entries generally.


{{Statute|18 U.S.C. 1001. Statements or entries generally.}}
Whoever, in any matter within the jurisdiction of any department  
Whoever, in any matter within the jurisdiction of any department  
or agency of the United States knowingly and willfully falsifies,  
or agency of the United States knowingly and willfully falsifies,  
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fraudulent statement or entry, shall be fined not more than  
fraudulent statement or entry, shall be fined not more than  
$10,000 or imprisoned not more than five years, or both.
$10,000 or imprisoned not more than five years, or both.
|}


A provisional application does not require an oath  
 
A provisional application does not require an oath  
or declaration to be complete. See 37 CFR 1.51(c).
or declaration to be complete. See 37 CFR 1.51(c).


I.OATH
I.OATH


A seal is usually impressed on an oath. See 37  
A seal is usually impressed on an oath. See 37  
CFR 1.66, MPEP § 604 and § 604.01. Documents  
CFR 1.66, MPEP § 604 and § 604.01. Documents  
with seals cannot be adequately scanned for retention  
with seals cannot be adequately scanned for retention  
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authorized to accept a statutory declaration under 28  
authorized to accept a statutory declaration under 28  
U.S.C. 1746 filed in the U.S. Patent and Trademark  
U.S.C. 1746 filed in the U.S. Patent and Trademark  
Office in lieu of an “oath” or declaration under 35  
Office in lieu of an "oath" or declaration under 35  
U.S.C. 25 and 37 CFR 1.68, provided that the statutory  
U.S.C. 25 and 37 CFR 1.68, provided that the statutory  
declaration otherwise complies with the requirements  
declaration otherwise complies with the requirements  
of law.
of law.
Section 1746 of Title 28 of the United States Code
provides:
Whenever, under any law of the United States or under
any rule, regulation, order, or requirement made pursuant
to law, any matter is required to be supported, evidenced,
established, or proved by sworn declaration, verification,
certificate, statement, oath or affidavit, in writing of the
person making the same (other than a deposition, or an
oath of office, or an oath required to be taken before a
specified official other than notary public), such matter
may, with like force and effect, be supported, evidenced,
established, or proved by the unsworn declaration, certificate,
verification, or statement, in writing of such person
which is subscribed by him, as true under penalty of perjury,
and dated, in substantially the following form:
[1] If executed without the United States:
“I declare (or certify, verify, or state) under penalty of
perjury under the laws of the United States of America
that the foregoing is true and correct. Executed on (date).
(Signature).”
[2]If executed within the United States its territories,
possessions, or commonwealths:
“I declare (or certify, verify, or state) under penalty of
perjury that the foregoing is true and correct. Executed
on (date).
(Signature).”


A 37 CFR 1.68 declaration need not be ribboned to  
A 37 CFR 1.68 declaration need not be ribboned to  
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The filing of a written declaration is acceptable in  
The filing of a written declaration is acceptable in  
lieu of an original application oath that is informal.
lieu of an original application oath that is informal.
The following form paragraphs may be used to
notify applicant that the oath or declaration is defective
because it was not properly executed.
¶ 6.05 Oath or Declaration Defective, Heading
The oath or declaration is defective. A new oath or declaration
in compliance with 37 CFR 1.67(a) identifying this application
by application number and filing date is required. See MPEP §§
602.01 and 602.02.
The oath or declaration is defective because:
Examiner Note:
1.One or more of the appropriate form paragraphs 6.05.01 to
6.05.20 must follow this paragraph.
2.If none of the form paragraphs apply, then an appropriate
explanation of the defect should be given immediately following
this paragraph.
¶ 6.05.01 Improper Execution
It was not executed in accordance with either 37 CFR 1.66 or
1.68.
Examiner Note:
This paragraph must be preceded by form paragraph 6.05.
¶ 6.05.17 Declaration Clause Omitted
The clause regarding “willful false statements ...” required by
37 CFR 1.68 has been omitted.
Examiner Note:
This paragraph must be preceded by form paragraph 6.05.


III.EARLIER FOREIGN APPLICATIONS
III.EARLIER FOREIGN APPLICATIONS


Oaths and declarations must make reference to any  
Oaths and declarations must make reference to any  
foreign application for patent (or inventor’s certificate)  
foreign application for patent (or inventor’s certificate)  
for which priority is claimed and any foreign  
for which priority is claimed and any foreign  
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CFR 1.63(c)(2).
CFR 1.63(c)(2).


If all foreign applications have been filed within  
If all foreign applications have been filed within 12 months of the U.S. filing date, applicant is required  
12  
months of the U.S. filing date, applicant is required  
only to recite the first such foreign application of  
only to recite the first such foreign application of  
which priority is claimed, and it should be clear that  
which priority is claimed, and it should be clear that  
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office in which filed, as well as the filing date of the  
office in which filed, as well as the filing date of the  
first filed foreign application.
first filed foreign application.
If the information regarding the foreign application
has not been included in an application data
sheet, or in an oath or declaration, form paragraphs
6.05 and 6.05.08 may be used to notify applicant that
the oath or declaration is defective because the prior
foreign application has not been identified.
¶ 6.05.08 Identification of Foreign Applications Omitted
It does not identify the foreign application for patent or inventor’s
certificate on which priority is claimed pursuant to 37 CFR
1.55, and any foreign application having a filing date before that
of the application on which priority is claimed, by specifying the
application number, country, day, month and year of its filing.
Examiner Note:
This paragraph must be preceded by form paragraph 6.05.


IV.SOLE OR JOINT DESIGNATION
IV.SOLE OR JOINT DESIGNATION
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to the fact that the affiant is a joint inventor  
to the fact that the affiant is a joint inventor  
together with each of the other inventors indicating  
together with each of the other inventors indicating  
 
them by name. This may be done by stating that he or she does verily believe himself or herself to be the original, first and joint inventor together with “A” or  
 
 
 
 
them by name. This may be done by stating that he or  
she does verily believe himself or herself to be the  
original, first and joint inventor together with “A” or  
“A & B, etc.” as the facts may be.
“A & B, etc.” as the facts may be.


V.NEW MATTER ISSUES
V. NEW MATTER ISSUES


For applications filed on or after September 21,  
For applications filed on or after September 21,  
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filing date of the application is part of the original disclosure  
filing date of the application is part of the original disclosure  
of the application. For applications filed  
of the application. For applications filed  
before September 21, 2004, a preliminary amendment  
before September 21, 2004, a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application if the  
that is present on the filing date of the application is  
part of the original disclosure of the application if the  
preliminary amendment was referred to in the first  
preliminary amendment was referred to in the first  
executed oath or declaration under 37 CFR 1.63 filed  
executed oath or declaration under 37 CFR 1.63 filed  
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as filed (i.e., subject matter that is “new matter”  
as filed (i.e., subject matter that is “new matter”  
relative to the specification and drawings of the application).  
relative to the specification and drawings of the application).  
As a result, it is applicant’s obligation to  
As a result, it is applicant’s obligation to  
review the preliminary amendment to ensure that it  
review the preliminary amendment to ensure that it  
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provide a supplemental oath or declaration under 37  
provide a supplemental oath or declaration under 37  
CFR 1.67 referring to such preliminary amendment.  
CFR 1.67 referring to such preliminary amendment.  
The failure to submit a supplemental oath or declaration
under 37 CFR 1.67 referring to a preliminary
amendment that contains subject matter not otherwise
included in the specification or drawings of the application
as filed removes safeguards that are implied in
the oath or declaration requirements that the inventor
review and understand the contents of the application,
and acknowledge the duty to disclose to the Office all
information known to be material to patentability as
defined in 37 CFR 1.56.
Applicants can avoid the need to file an oath or declaration
referring to any preliminary amendment by
incorporating any desired amendments into the text of
the specification including a new set of claims when
filing the application instead of filing a preliminary
amendment, even where the application is a continuation
or divisional application of a prior-filed application.
Furthermore, applicants are strongly encouraged
to avoid submitting any preliminary amendments so
as to minimize the burden on the Office in processing
preliminary amendments and reduce delays in processing
the application.


During examination, if an examiner determines that  
During examination, if an examiner determines that  
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may require the applicant to file a supplemental oath  
may require the applicant to file a supplemental oath  
or declaration under 37 CFR 1.67 referring to the preliminary  
or declaration under 37 CFR 1.67 referring to the preliminary  
amendment. In response to the requirement,  
amendment.
 
In response to the requirement,  
applicant must submit (A) an oath or declaration that  
applicant must submit (A) an oath or declaration that  
refers to the preliminary amendment, (B) an amendment  
refers to the preliminary amendment, (B) an amendment  
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a request for reconsideration.
a request for reconsideration.


For applications filed prior to September 21, 2004,  
For applications filed prior to September 21, 2004, if the preliminary amendment was not referred to in  
a preliminary amendment that is present on the filing
date of an application may be considered a part of the
original disclosure if it is referred to in a first filed
oath or declaration in compliance with 37 CFR 1.63.
If the preliminary amendment was not referred to in  
the oath or declaration, applicant will be required to  
the oath or declaration, applicant will be required to  
submit a supplemental oath or declaration under 37  
submit a supplemental oath or declaration under 37  
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or declaration will be required pursuant to 37 CFR  
or declaration will be required pursuant to 37 CFR  
1.67(b), deleting the reference to the amendment containing  
1.67(b), deleting the reference to the amendment containing  
new matter. See also MPEP § 608.04. If the  
new matter. See also MPEP § 608.04.
 
If the  
application papers are altered prior to the execution of  
application papers are altered prior to the execution of  
the oath or declaration and the filing of the application,  
the oath or declaration and the filing of the application,  
new matter is not a consideration since the alteration  
new matter is not a consideration since the alteration  
is considered as part of the original disclosure.  
is considered as part of the original disclosure.  
See MPEP § 602.05(a) where a continuation application
under 37 CFR 1.53(b) is filed with a copy of a
declaration from a prior application, but the continuation
application is filed with a rewritten specification.


If a claim is presented for matter not originally  
If a claim is presented for matter not originally  
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declaration is required, 37 CFR 1.67, MPEP § 603.
declaration is required, 37 CFR 1.67, MPEP § 603.


VI.IDENTIFICATION OF APPLICATION
VI. IDENTIFICATION OF APPLICATION


37 CFR 1.63 requires that an oath or declaration  
37 CFR 1.63 requires that an oath or declaration  
identify the specification to which it is directed. The
identify the specification to which it is directed, by giving information such as the names of the inventors, title of  
declaration form suggested by the Office includes
the invention, application number, attorney docket number, filing date, and foreign  
spaces for filling in the names of the inventors, title of  
priority application information.
the invention, application number, filing date, and foreign  
priority application information. While this
information should be provided, it is not essential that
all of these spaces be completed in order to adequately
identify the specification in compliance with
37 CFR 1.63(b)(1).
 
The following combination of information supplied
in an oath or declaration filed on the application filing
date with a specification are acceptable as minimums
for identifying a specification and compliance with
any one of the items below will be accepted as complying
with the identification requirement of 37 CFR
1.63:
 
(A)name of inventor(s), and reference to an
attached specification which is both attached to the
oath or declaration at the time of execution and submitted
with the oath or declaration on filing;


(B)name of inventor(s), and attorney docket
Filing dates are granted on applications filed without an oath or declaration in compliance with 37 CFR 1.63, the oath or declaration being filed later with a surcharge.
number which was on the specification as filed; or
 
(C)name of inventor(s), and title of the invention
which was on the specification as filed.
 
Filing dates are granted on applications filed without  
an oath or declaration in compliance with 37 CFR  
1.63, the oath or declaration being filed later with a  
surcharge. The following combinations of information
supplied in an oath or declaration filed after the
filing date of the application are acceptable as minimums
for identifying a specification and compliance
with any one of the items below will be accepted as
complying with the identification requirement of 37
CFR 1.63:
 
(A)application number (consisting of the series
code and the serial number, e.g., 08/123,456);
 
(B)serial number and filing date;
 
(C)attorney docket number which was on the
specification as filed;
 
(D)title of the invention which was on the specification
as filed and reference to an attached specification
which is both attached to the oath or declaration
at the time of execution and submitted with the oath
or declaration; or
 
(E)title of the invention which was on the specification
as filed and accompanied by a cover letter
accurately identifying the application for which it was
intended by either the application number (consisting
of the series code and the serial number, e.g., 08/
123,456), or serial number and filing date. Absent any
statement(s) to the contrary, it will be presumed that
the application filed in the USPTO is the application
which the inventor(s) executed by signing the oath or
declaration.
 
Form paragraphs 6.05 and 6.05.20 may be used to
notify applicant that the oath or declaration is defective
because the specification has not been adequately
identified.
 
¶ 6.05.20 Specification Not Identified
 
The specification to which the oath or declaration is directed
has not been adequately identified. See MPEP § 602.
 
Examiner Note:
 
This paragraph must be preceded by form paragraph 6.05.


Any specification that is filed attached to an oath or  
Any specification that is filed attached to an oath or  
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date will not be compared with the specification submitted  
date will not be compared with the specification submitted  
on filing. Absent any statement(s) to the contrary,  
on filing. Absent any statement(s) to the contrary,  
the “attached” specification will be presumed to  
the "attached" specification will be presumed to  
be a copy of the specification and any amendments  
be a copy of the specification and any amendments  
thereto, which were filed in the USPTO in order to  
thereto, which were filed in the USPTO in order to  
obtain a filing date for the application.
obtain a filing date for the application.


Any variance from the above guidelines will only  
Any variance from the above guidelines will only  
be considered upon the filing of a petition for waiver  
be considered upon the filing of a petition for waiver  
of the rules under 37 CFR 1.183 accompanied by a  
of the rules under 37 CFR 1.183 accompanied by a  
petition fee (37 CFR 1.17(f)).
petition fee (37 CFR 1.17(f)).


Further an oath or declaration attached to a cover  
Further an oath or declaration attached to a cover letter referencing an incorrect application may not  
letter referencing an incorrect application may not  
become associated with the correct application and, therefore, could result in the abandonment of the correct  
become associated with the correct application and,  
 
 
 
 
 
therefore, could result in the abandonment of the correct  
application.
application.


Supplemental oaths or declarations in accordance  
Supplemental oaths or declarations in accordance  
with 37 CFR 1.67 will be required in applications in  
with 37 CFR 1.67 will be required in applications in  
which the oaths or declarations are not in compliance  
which the oaths or declarations are not in compliance  
Line 632: Line 361:
to which they apply as detailed above.
to which they apply as detailed above.


See MPEP § 1896 for the identification requirements
===602.01 Oath Cannot Be Amended===
for a declaration filed in a U.S. national stage
application filed under 35 U.S.C. 371.
 
VII.COPIES OF OATHS OR DECLARATIONS
ARE ENCOURAGED
 
A copy, such as a photocopy or facsimile transmission,
of an originally executed oath or declaration is
encouraged to be filed (see MPEP § 502.01), especially
since applications are maintained in electronic
form, not paper. The original should be retained by
applicant, or his or her representative as evidence of
authenticity. If a question of authenticity arises, the
U.S. Patent and Trademark Office may require submission
of the original. See 37 CFR 1.4(d)(1)(ii).
 
Note
 
See MPEP § 602.03 for other defects in the oath or
declaration.
 
 
 
 
 
 
 
Form PTO/SB/01. Declaration for Utility or Design Patent Application (37 CFR 1.63)[Page 1 of 2]Form PTO/SB/01. Declaration for Utility or Design Patent Application (37 CFR 1.63)[Page 1 of 2]
Doc Code: PTO/SB/01 (07-06)
Approved for use through 01/31/2007. OMB 0651-0032
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.
DECLARATION FOR UTILITY OR
DESIGN
PATENT APPLICATION
(37 CFR 1.63)
Declaration Declaration
Submitted OR Submitted after Initial
With Initial Filing (surcharge
Filing (37 CFR 1.16 (e))
required)
Attorney Docket
Number
First Named Inventor
COMPLETE IF KNOWN
Application Number
Filing Date
Art Unit
Examiner Name
I hereby declare that:
Each inventor’s residence, mailing address, and citizenship are as stated below next to their name.
I believe the inventor(s) named below to be the original and first inventor(s) of the subject matter which is claimed and for
which a patent is sought on the invention entitled:
(Title of the Invention)
the specification of which
is attached hereto
ORwas filed on (MM/DD/YYYY) as United States Application Number or PCT InternationalApplication Number and was amended on (MM/DD/YYYY) (if applicable).
I hereby state that I have reviewed and understand the contents of the above identified specification, including the claims, as
amended by any amendment specifically referred to above.
I acknowledge the duty to disclose information which is material to patentability as defined in 37 CFR 1.56, including for
continuation-in-part applications, material information which became available between the filing date of the prior application
and the national or PCT international filing date of the continuation-in-part application.
I hereby claim foreign priority benefits under 35 U.S.C. 119(a)-(d) or (f), or 365(b) of any foreign application(s) for patent,
inventor’s or plant breeder’s rights certificate(s), or 365(a) of any PCT international application which designated at least onecountry other than the United States of America, listed below and have also identified below, by checking the box, any foreign
application for patent, inventor’s or plant breeder’s rights certificate(s), or any PCT international application having a filing date
before that of the application on which priority is claimed.
Prior Foreign Application
Number(s)CountryForeign Filing Date
(MM/DD/YYYY)
PriorityNotClaimed
Certified Copy Attached?
YESNOAdditional foreign application numbers are listed on a supplemental priority data sheet PTO/SB/02B attached hereto.
[Page 1 of 2]
This collection of information is required by 35 U.S.C. 115 and 37 CFR 1.63. The information is required to obtain or retain a benefit by the public which is to file
(and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 21
minutes to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual
case. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information
Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED
FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
If you need assistance completing the form, call 1-800-PTO-9199 and select option 2.
 
 
 
 
 
 
Declaration - Utility or Design Patent Application
Declaration - Utility or Design Patent Application
PTO/SB/01 (07-06)
Approved for use through 01/31/2007. OMB 0651-0032
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.
DECLARATION —Utility or Design Patent Application
Direct all
iORNameAddressStateEmailllilii)
ilale.
lwilwillful false
illful
])
DateState Zip
/.
correspondence to:
The address
associated wth
Customer Number:
Correspondence
address below
CityZIP
Country Telephone
WARNING:
Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that may
contribute to identity theft. Personal information such as social security numbers, bank account numbers, or credit card
numbers (other than a check or credit card authorization form PTO-2038 submitted for payment purposes) is never required by
the USPTO to support a petition or an application. If this type of personainformation is included in documents submitted to
the USPTO, petitioners/applicants shoud consider redacting such personal information from the documents before submitting
them to the USPTO. Petitioner/applicant is advised that the record of a patent application is avaable to the public after
publication of the application (unless a non-publication request in complance wth 37 CFR 1.213(a) is made in the applicationor issuance of a patent. Furthermore, the record from an abandoned application may also be avaable to the public if the
application is referenced in published application or an issued patent (see 37 CFR 1.14). Checks and credit card
authorization forms PTO-2038 submitted for payment purposes are not retained in the application file and therefore are not
publicly availabI hereby declare that all statements made herein of my own knowedge are true and that all statements made on information
and belief are believed to be true; and further that these statements were made th the knowedge that
statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001 and that such wfalse statements may jeopardize the validity of the application or any patent issued thereon.
NAME OF SOLE OR FIRST INVENTOR: A petition has been filed for this unsigned inventor
Given Name (first and middle [if anyFamily Name or Surname
Inventor's Signature
Residence: City State Country Citizenship
Mailing Address
CityCountry
Additional inventors or a legal representative are being named on the ___________supplemental sheet(s) PTOSB/02A or 02LR attached hereto[Page 2 of 2]
 
 
 
 
 
 
Privacy Act StatementPrivacy Act Statement
Privacy Act Statement
ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection
with your submission of the attached form related to a patent application or patent. Accordingly,
pursuant to the requirements of the Act, please be advised that: (1) the general authority for the
collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary;
and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark
Office is to process and/or examine your submission related to a patent application or patent. If you do
not furnish the requested information, the U.S. Patent and Trademark Office may not be able to
process and/or examine your submission, which may result in termination of proceedings or
abandonment of the application or expiration of the patent.
The information provided by you in this form will be subject to the following routine uses:
1. The information on this form will be treated confidentially to the extent allowed under the
Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from
this system of records may be disclosed to the Department of Justice to determine whether
disclosure of these records is required by the Freedom of Information Act.
2. A record from this system of records may be disclosed, as a routine use, in the course of
presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to
opposing counsel in the course of settlement negotiations.
3. A record in this system of records may be disclosed, as a routine use, to a Member of
Congress submitting a request involving an individual, to whom the record pertains, when the
individual has requested assistance from the Member with respect to the subject matter of the
record.
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the
Agency having need for the information in order to perform a contract. Recipients of
information shall be required to comply with the requirements of the Privacy Act of 1974, as
amended, pursuant to 5 U.S.C. 552a(m).
5. A record related to an International Application filed under the Patent Cooperation Treaty in
this system of records may be disclosed, as a routine use, to the International Bureau of the
World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
6. A record in this system of records may be disclosed, as a routine use, to another federal
agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to
the Atomic Energy Act (42 U.S.C. 218(c)).
7. A record from this system of records may be disclosed, as a routine use, to the Administrator,
General Services, or his/her designee, during an inspection of records conducted by GSA as
part of that agency’s responsibility to recommend improvements in records management
practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall
be made in accordance with the GSA regulations governing inspection of records for this
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not
be used to make determinations about individuals.
8. A record from this system of records may be disclosed, as a routine use, to the public after
either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent
pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37
CFR 1.14, as a routine use, to the public if the record was filed in an application which
became abandoned or in which the proceedings were terminated and which application is
referenced by either a published application, an application open to public inspection or an
issued patent.
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State,
or local law enforcement agency, if the USPTO becomes aware of a violation or potential
violation of law or regulation.
 
 
 
 
 
 
PTO/SB/01A Declaration (37 CFR 1.63) for Utility or Design Application Using an Application Data Sheet (37 CFR 1.76)PTO/SB/01A Declaration (37 CFR 1.63) for Utility or Design Application Using an Application Data Sheet (37 CFR 1.76)
Doc Code: PTO/SB/01A (07-06)
Approved for use through 01/31/2007. OMB 0651-0032
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless if displays a valid OMB control number.
DECLARATION (37 CFR 1.63) FOR UTILITY OR DESIGN APPLICATION USING AN
APPLICATION DATA SHEET (37 CFR 1.76)
Title of
Invention
As the below named inventor(s), I/we declare that:
This declaration is directed to:
The attached application, or
Application No. ____________________ filed on ________________________________
As amended on __________________________________________ (if applicable);
I/we believe that I/we am/are the original and first inventor(s) of the subject matter which is claimed and for which a patent issought;
I/we have reviewed and understand the contents of the above-identified application, including the claims, as amended by any
amendment specifically referred to above;
I/we acknowledge the duty to disclose to the United States Patent and Trademark Office all information known to me/us to be
material to patentability as defined in 37 CFR 1.56, including for continuation-in-part applications, material information whichbecame available between the filing date of the prior application and the national or PCT International filing date of the
continuation-in-part application.
WARNING:
Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that may
contribute to identity theft. Personal information such as social security numbers, bank account numbers, or credit card
numbers (other than a check or credit card authorization form PTO-2038 submitted for payment purposes) is never required by
the USPTO to support a petition or an application. If this type of personal information is included in documents submitted to
the USPTO, petitioners/applicants should consider redacting such personal information from the documents before submitting
them to the USPTO. Petitioner/applicant is advised that the record of a patent application is available to the public after
publication of the application (unless a non-publication request in compliance with 37 CFR 1.213(a) is made in the application)
or issuance of a patent. Furthermore, the record from an abandoned application may also be available to the public if the
application is referenced in a published application or an issued patent (see 37 CFR 1.14). Checks and credit card
authorization forms PTO-2038 submitted for payment purposes are not retained in the application file and therefore are not
publicly available.
All statements made herein of my/own knowledge are true, all statements made herein on information and belief are believed
to be true, and further that these statements were made with the knowledge that willful false statements and the like are
punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and may jeopardize the validity of the application or any
patent issuing thereon.
FULL NAME OF INVENTOR(S)
Inventor one: _________________________________________________________________________________________
Signature: _______________________________________________________Citizen of: ____________________________
Inventor two: _________________________________________________________________________________________
Signature: _______________________________________________________Citizen of: ____________________________
Additional inventors or a legal representative are being named on _______________________additional form(s) attached hereto.
This collection of information is required by 35 U.S.C. 115 and 37 CFR 1.63. The information is required to obtain or retain a benefit by the public which is to file
(and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 1
minute to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individualcase. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information
Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED
FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
 
 
 
 
 
 
Privacy Act Statment
Privacy Act Statement
ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection
with your submission of the attached form related to a patent application or patent. Accordingly,
pursuant to the requirements of the Act, please be advised that: (1) the general authority for the
collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary;
and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark
Office is to process and/or examine your submission related to a patent application or patent. If you do
not furnish the requested information, the U.S. Patent and Trademark Office may not be able to
process and/or examine your submission, which may result in termination of proceedings or
abandonment of the application or expiration of the patent.
The information provided by you in this form will be subject to the following routine uses:
1. The information on this form will be treated confidentially to the extent allowed under the
Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from
this system of records may be disclosed to the Department of Justice to determine whether
disclosure of these records is required by the Freedom of Information Act.
2. A record from this system of records may be disclosed, as a routine use, in the course of
presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to
opposing counsel in the course of settlement negotiations.
3. A record in this system of records may be disclosed, as a routine use, to a Member of
Congress submitting a request involving an individual, to whom the record pertains, when the
individual has requested assistance from the Member with respect to the subject matter of the
record.
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the
Agency having need for the information in order to perform a contract. Recipients of
information shall be required to comply with the requirements of the Privacy Act of 1974, as
amended, pursuant to 5 U.S.C. 552a(m).
5. A record related to an International Application filed under the Patent Cooperation Treaty in
this system of records may be disclosed, as a routine use, to the International Bureau of the
World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
6. A record in this system of records may be disclosed, as a routine use, to another federal
agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to
the Atomic Energy Act (42 U.S.C. 218(c)).
7. A record from this system of records may be disclosed, as a routine use, to the Administrator,
General Services, or his/her designee, during an inspection of records conducted by GSA as
part of that agency’s responsibility to recommend improvements in records management
practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall
be made in accordance with the GSA regulations governing inspection of records for this
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not
be used to make determinations about individuals.
8. A record from this system of records may be disclosed, as a routine use, to the public after
either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent
pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37
CFR 1.14, as a routine use, to the public if the record was filed in an application which
became abandoned or in which the proceedings were terminated and which application is
referenced by either a published application, an application open to public inspection or an
issued patent.
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State,
or local law enforcement agency, if the USPTO becomes aware of a violation or potential
violation of law or regulation.
 
 
 
 
 
 
 
 
602.01Oath Cannot Be Amended  


The wording of an oath or declaration cannot be  
The wording of an oath or declaration cannot be  
Line 956: Line 375:
CFR 1.63(c)(1) and (c)(2).
CFR 1.63(c)(1) and (c)(2).


For example, if the oath does not set forth evidence
===602.02 New Oath or Substitute for Original===
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. See
MPEP § 602 and § 604.02.
 
Applicant may be so advised by using form paragraph
6.03.
 
¶ 6.03 Oath, Declaration Cannot Be Amended
 
A new oath or declaration is required because [1]. The wording
of an oath or declaration cannot be amended. If the wording is not
correct or if all of the required affirmations have not been made or
if it has not been properly subscribed to, a new oath or declaration
is required. The new oath or declaration must properly identify the
application of which it is to form a part, preferably by application
number and filing date in the body of the oath or declaration. See
MPEP §§ 602.01 and 602.02.
 
Examiner Note:
 
1.This form paragraph is intended primarily for use in pro seapplications.
 
2.Use form paragraph 6.05 and one or more of form paragraphs
6.05.01 to 6.05.20 for a defective oath or declaration in a
case where there is a power of attorney.
 
3.Some corrections may be made by an application data sheet.
If the error is correctable by an application data sheet, applicant
should be informed of the requirements of an application data
sheet. See 37 CFR 1.76 and MPEP § 601.05.
 
¶ 6.05.16 Non-Initialed/Non-Dated Alterations
 
Non-initialed and/or non - dated alterations have been made to
the oath or declaration. See 37 CFR 1.52(c).
 
Examiner Note:
 
This paragraph must be preceded by form paragraph 6.05.
 
602.02New Oath or Substitute for  
Original [R-2]
 
In requiring a new oath or declaration, the examiner
should always give the reason for the requirement and
call attention to the fact that the application of which
it is to form a part must be properly identified in the
body of the new oath or declaration, preferably by
giving the application number and the date of filing.
Any one of the combinations of information identified
in MPEP § 602 as acceptable for an oath or declaration
filed after the filing date may be used.


Where neither the original oath or declaration, nor  
Where neither the original oath or declaration, nor  
Line 1,018: Line 383:
no further oath or declaration is needed.
no further oath or declaration is needed.


602.03Defective Oath or Declaration  
===602.03 Defective Oath or Declaration===
[R-5]


In the first Office action the examiner must point  
In the first Office action the examiner must point  
out every deficiency in a declaration or oath and  
out every deficiency in a declaration or oath and  
require that the same be remedied. Applicant may be
require that the same be remedied.
informed of deficiencies in the declaration or oath by
form paragraphs 6.05 and 6.05.01 - 6.05.20.
 
The following form paragraph 6.05 must be used to
introduce one or more of Form Paragraphs 6.05.01 -
6.05.20, which explain errors in the oath or declaration.
One or more of the following form paragraphs
may be used to notify applicant of the objections to
the oath or declaration due to a missing “reviewed and
understands” statement, “original and first” statement,
duty to disclose statement, or if the oath or declaration
is not in permanent ink. See MPEP § 602 for defects
in the execution of the oath or declaration, failure to
properly reference to an earlier foreign application, or
a failure to properly identify the application papers.
See MPEP § 602.04 for a defective foreign executed
oath and MPEP § 602.04(a) for an oath with an
improperly attached ribbon.
 
¶ 6.05 Oath or Declaration Defective, Heading
 
The oath or declaration is defective. A new oath or declaration
in compliance with 37 CFR 1.67(a) identifying this application
by application number and filing date is required. See MPEP §§
602.01 and 602.02.
 
The oath or declaration is defective because:
 
 
 
 
 
Examiner Note:
 
1.One or more of the appropriate form paragraphs 6.05.01 to
6.05.20 must follow this paragraph.
 
2.If none of the form paragraphs apply, then an appropriate
explanation of the defect should be given immediately following
this paragraph.
 
¶ 6.05.05 “Reviewed and Understands” Statement
Omitted
 
It does not state that the person making the oath or declaration
has reviewed and understands the contents of the specification,
including the claims, as amended by any amendment specifically
referred to in the oath or declaration.
 
Examiner Note:
 
This paragraph must be preceded by form paragraph 6.05.
 
¶ 6.05.06 Original and First Omitted
 
It does not state that the person making the oath or declaration
believes the named inventor or inventors to be the original and
first inventor or inventors of the subject matter which is claimed
and for which a patent is sought.
 
Examiner Note:
 
This paragraph must be preceded by form paragraph 6.05.
 
¶ 6.05.07 Duty To Disclose Omitted
 
It does not state that the person making the oath or declaration
acknowledges the duty to disclose to the Office all information
known to the person to be material to patentability as defined in
37 CFR 1.56.
 
Examiner Note:
 
This paragraph must be preceded by form paragraph 6.05.
 
¶ 6.05.15 Not in Permanent Ink
 
The [1] is not in permanent ink, or its equivalent in quality, as
required under 37 CFR 1.52(a)(1)(iv).
 
Examiner Note:
 
1.In bracket 1, insert either signature or oath/declaration.
 
2.This paragraph must be preceded by form paragraph 6.05.
 
3.If other portions of the disclosure are not in permanent ink,
use form paragraph 6.32.


When an application is otherwise ready for issue,  
When an application is otherwise ready for issue,  
an examiner with full signatory authority may waive  
an examiner with full signatory authority may waive minor deficiencies in the body of the oath or declaration  
the following minor deficiencies:
 
Minor deficiencies in the body of the oath or declaration  
where the deficiencies are self-evidently cured  
where the deficiencies are self-evidently cured  
in the rest of the oath or declaration. In re Searles, 422
in the rest of the oath or declaration.
F.2d 431, 437, 164 USPQ 623, 628 (CCPA 1970).
 
If such a deficiency is waived, the examiner with
full signatory authority should write in the margin of
the declaration or oath a notation why the deficiency
was waived, indicate that the application is ready for
issue, and provide his or her initials and the date. For
Image File Wrapper (IFW) processing, see IFW Manual.
 


Of course, requirements of the statute, e.g., that the  
Of course, requirements of the statute, e.g., that the  
Line 1,139: Line 402:
therein, cannot be waived.
therein, cannot be waived.


If the defect cannot be waived, form paragraph 6.46should be used when the application is allowable.
===602.04 Foreign Executed Oath===
 
 
 
¶ 6.46 Application Allowed, Substitute Declaration
Needed
 
Applicant is now required to submit a substitute declaration or
oath to correct the deficiencies set forth [1]. The substitute oath
or declaration must be filed within the THREE MONTH shortened
statutory period set for reply in the “Notice of Allowability”
(PTO-37). Extensions of time may NOT be obtained under the
provisions of 37 CFR 1.136. Failure to timely file the substitute
declaration (or oath) will result in ABANDONMENT of the
application. The transmittal letter accompanying the declaration
(or oath) should indicate the date of the “Notice of Allowance”
(PTOL-85) and the application number in the upper right hand
corner.
 
Examiner Note:
 
In the bracket, insert appropriate information, e.g., --in this
communication--, --in the Office action mailed ________--.
 
 
 
602.04Foreign Executed Oath


An oath executed in a foreign country must be  
An oath executed in a foreign country must be  
properly authenticated. See 37 CFR 1.66 and MPEP §  
properly authenticated. See 37 CFR 1.66 and MPEP § 604.  
604.  
 
Where the authority of the foreign officer is not certified,
form paragraphs 6.05 (reproduced in MPEP §
602.03) and 6.05.13 may be used.
 
¶ 6.05.13 Authority of Foreign Officer Not Certified
 
It does not include an apostille, a consular certificate, or the
position of authority of the officer signing an apostille or consular
certificate, see 37
CFR 1.66(a).
 
Examiner Note:
 
This paragraph applies only to foreign executed oaths and must
be preceded by form paragraph 6.05.
 
 
 
 
 
602.04(a)Foreign Executed Oath Is
Ribboned to Other Application
Papers [R-5]
 
37 CFR 1.66. Officers authorized to administer oaths.
 


====602.04(a) Foreign Executed Oath Is Ribboned to Other Application Papers====


{{Statute|37 CFR 1.66. Officers authorized to administer oaths.}}
{{Ellipsis}}
(b)When the oath is taken before an officer in a country foreign  
(b)When the oath is taken before an officer in a country foreign  
to the United States, any accompanying application papers,  
to the United States, any accompanying application papers,  
Line 1,212: Line 423:
duplicate papers, prepared in compliance with the foregoing sentence,  
duplicate papers, prepared in compliance with the foregoing sentence,  
must be filed.
must be filed.
|}


Where the papers are not properly ribboned, use
form paragraphs 6.05 (reproduced in MPEP § 602.03)
and 6.05.14.
¶ 6.05.14 No Ribbon Properly Attached
It does not have a ribbon properly attached.
Examiner Note:
This paragraph applies only to foreign executed oaths and must
be preceded by form paragraph 6.05.


U.S. ACCESSION TO HAGUE CONVENTION  
U.S. ACCESSION TO HAGUE CONVENTION  
Line 1,231: Line 431:
DOCUMENTS
DOCUMENTS


On Oct. 15, 1981, the Hague “Convention Abolishing
The Office will accept for filing or  
the Requirement of Legalization for Foreign Public
Documents” entered into force between the United
States and 28 foreign countries as parties to the Convention.
Subsequently, additional countries have
become parties to the Convention. The Convention
applies to any document submitted to the United
States Patent and Trademark Office for filing or
recording, which is sworn to or acknowledged by a
notary public in any one of the member countries. The
Convention abolishes the certification of the authority
of the notary public in a member country by a diplomatic
or consular officer of the United States and substitutes
certification by a special certificate, or
apostille, executed by an officer of the member country.
Accordingly, the Office will accept for filing or  
recording a document sworn to or acknowledged  
recording a document sworn to or acknowledged  
before a notary public in a member country if the document  
before a notary public in a member country if the document  
Line 1,256: Line 441:
country if an apostille is used.
country if an apostille is used.


The member countries that are parties to the Convention
===602.05 Oath or Declaration — Date of Execution===
are:
 
Andorra, Angola1, Anguilla, Antigua and Barbuda,
Argentina, Armenia2, Aruba, Australia, Austria,
Bahamas, Barbados, Belarus2, Belgium, Belize, Bermuda,
Bosnia-Herzegovina3, Botswana, British Antarctic
Territory, British Virgin Islands, Brunei,
Cayman Islands, Comoros Islands (formerly
Moroni)1, Croatia3, Cyprus, Djibouti (formerly Affars
and Issas)1, Dominica1, El Salvador, Falkland Islands,
Fiji, Finland, France, French Guiana, French Polynesia,
Guadeloupe, Germany, Gibraltar, Greece,
Grenada1, Guernsey (Bailiwick of), Hong Kong, Hungary,
Isle of Man, Israel, Italy, Japan, Jersey (Bailiwick
of), Kiribati (formerly Gilbert Islands)1, Latvia,
Lesotho, Liechtenstein, Luxembourg, Macedonia3,
Malawi, Malta, Marshall Islands, Martinique, Mauritius,
Mexico, Montserrat, Mozambique1, Netherlands,
Netherlands Antilles (Curacao, Bonaire, St. Martin,
St. Eustatius and Saba), New Caledonia, Norway,
Panama, Portugal, Reunion, Russian Federation2, St.
Christopher (Kitts) and Nevis, St. Georgia and South
Sandwich Islands, St. Helena, St. Lucia, St. Pierre and
Miquelon, St. Vincent and the Grenadines, San
Marino, Seychelles, Slovenia3, Solomon Islands (formerly
British Solomon Islands)1, South Africa, Spain,
Suriname, Swaziland, Switzerland, Tonga, Turkey,
Turks and Caicos, Tuvalu (formerly Ellice Islands)1,
United Kingdom, United States, Vanuatu (formerly
New Hebrides)1, Wallis and Futuna.123
 
A list of the current member countries that are
parties to the Hague Convention can be obtained from
the Internet web site of the Hague Conference on Private
International Law at http://www.hcch.net or from
 
 
 
 
 
the Internet web site of the U.S. Department of State,
Bureau of Consular Affairs at http://travel.state.gov/
law/legal/treaty/treaty_783.html#countries.
 
The Convention prescribes the following form for
the apostille:
 
Model of Certificate
 
The certificate will be in the form of a square with
sides at least 9 centimeters long.
 
Apostille
 
 
Note that a declaration in lieu of application oath
(37
CFR 1.68) need not be ribboned to the other
papers. It must, however, be maintained together
therewith.
 
602.05Oath or Declaration — Date ofExecution


The Office no longer checks the date of execution  
The Office no longer checks the date of execution  
Line 1,331: Line 453:
under 37 CFR 1.56.
under 37 CFR 1.56.


602.05(a)Oath or Declaration in Continuation  
====602.05(a) Oath or Declaration in Continuation and Divisional Applications====
and Divisional Applications  
[R-3]


A continuation or divisional application filed under  
A continuation or divisional application filed under 37 CFR 1.53(b) (other than a continuation-in-part (CIP)) may be filed with a copy of the oath or declaration from the  
37  
CFR 1.53(b) (other than a continuation-in-part  
(CIP)) may be filed with a copy of the oath or declaration  
from  
the  
prior nonprovisional application. See 37  
prior nonprovisional application. See 37  
CFR 1.63(d)(1)(iv).
CFR 1.63(d)(1)(iv).
A copy of an oath or declaration from a prior application
may be submitted with a continuation or divisional
application even if the oath or declaration
identifies the application number of the prior application.
However, if such a copy of the oath or declaration
is filed after the filing date of the continuation or
divisional application and an application number has
been assigned to the continuation or divisional application
(see 37 CFR 1.5(a)), the cover letter accompanying
the oath or declaration should identify the
application number of the continuation or divisional
application. The cover letter should also indicate that
the oath or declaration submitted is a copy of the oath
or declaration from a prior application to avoid the
oath or declaration being incorrectly matched with the
prior application file. Furthermore, applicant should
also label the copy of the oath or declaration with the
application number of the continuation or divisional
application in the event that the cover letter is separated
from the copy of the oath or declaration.


A copy of the oath or declaration from a prior nonprovisional  
A copy of the oath or declaration from a prior nonprovisional  
Line 1,370: Line 464:
the continuation or divisional application is different  
the continuation or divisional application is different  
from that of the prior application, in that revisions  
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. See 37
CFR 1.52(c)(3).


 
If the examiner determines that the  
 
continuation or divisional application contains new matter relative to the prior application, the examiner  
 
 
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. See 37
CFR 1.52(c)(3). If the examiner determines that the  
continuation or divisional application contains new  
matter relative to the prior application, the examiner  
should so notify the applicant in the next Office  
should so notify the applicant in the next Office  
action. The examiner should also (A) require a  
action. The examiner should also (A) require a  
Line 1,391: Line 478:


A continuation or divisional application of a prior  
A continuation or divisional application of a prior  
application accorded status under 37 CFR 1.47 will be  
application accorded status under [[37_C.F.R.#.C2.A7_1.47_Filing_when_an_inventor_refuses_to_sign_or_cannot_be_reached.|37 CFR 1.47]] will be  
accorded status under 37 CFR 1.47 if a copy of the  
accorded status under 37 CFR 1.47 if a copy of the  
decision according 37 CFR 1.47 status in the prior  
decision according 37 CFR 1.47 status in the prior  
Line 1,398: Line 485:
of the inventors is included upon filing the continuation  
of the inventors is included upon filing the continuation  
or divisional application. An oath or declaration  
or divisional application. An oath or declaration  
in an application accorded status under 37 CFR 1.47is generally not signed by all of the inventors. Accordingly,  
in an application accorded status under 37 CFR 1.47is generally not signed by all of the inventors.
 
Accordingly,  
if a copy of an oath or declaration of a prior  
if a copy of an oath or declaration of a prior  
application is submitted in a continuation or divisional  
application is submitted in a continuation or divisional  
Line 1,451: Line 540:
application.
application.


602.06Non-English Oath or Declaration  
===602.06 Non-English Oath or Declaration===
[R-3]
 
37 CFR 1.69. Foreign language oaths and declarations.


{{Statute|37 CFR 1.69. Foreign language oaths and declarations.}}
(a)Whenever an individual making an oath or declaration  
(a)Whenever an individual making an oath or declaration  
cannot understand English, the oath or declaration must be in a  
cannot understand English, the oath or declaration must be in a  
Line 1,470: Line 557:
filed in the Office no later than two months from the date applicant  
filed in the Office no later than two months from the date applicant  
is notified to file the translation.
is notified to file the translation.
|}


37 CFR 1.69 requires that oaths and declarations be  
37 CFR 1.69 requires that oaths and declarations be  
Line 1,477: Line 566:
the English language, he or she should preferably  
the English language, he or she should preferably  
use it. If the individual cannot comprehend the  
use it. If the individual cannot comprehend the  
English language, any oath or declaration must be in  
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  
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  
an oath or declaration, the oath or declaration must  
include a statement that the individual understands  
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  
content of any documents to which the oath or  
declaration relates. If the documents are in a language  
the individual cannot comprehend, the documents  
the individual cannot comprehend, the documents  
may be explained to him or her so that he or she is  
may be explained to him or her so that he or she is able to understand them.
able to understand them.


The Office will accept a single non-English language  
The Office will accept a single non-English language  
Line 1,501: Line 577:
understand the non-English language of the oath or  
understand the non-English language of the oath or  
declaration.
declaration.
602.07Oath or Declaration Filed in
United States as a Designated Office
[R-3]
See MPEP § 1893.01(e).

Latest revision as of 22:46, May 31, 2020

← MPEP 601 ↑ MPEP 600 MPEP 603 →


602 Original Oath or Declaration[edit | edit source]

35 U.S.C. 25. Declaration in lieu of oath.

(a) The Director may by rule prescribe that any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration in such form as the Director may prescribe, such declaration to be in lieu of the oath otherwise required.

(b) Whenever such written declaration is used, the document must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001).


35 U.S.C. 26. Effect of defective execution.

Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be executed in a specified manner may be provisionally accepted by the Director despite a defective execution, provided a properly executed document is submitted within such time as may be prescribed.


35 U.S.C. 115. Oath of applicant.

The applicant shall make oath 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 shall state of what country he is a citizen. Such oath may be made before any person within the United States authorized by law to administer oaths, or, when made in a foreign country, before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority is proved by certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. Such oath is valid if it complies with the laws of the state or country where made. When the application is made as provided in this title by a person other than the inventor, the oath may be so varied in form that it can be made by him. For purposes of this section, a consular officer shall include any United States citizen serving overseas, authorized to perform notarial functions pursuant to section 1750 of the Revised Statutes, as amended (22 U.S.C. 4221).


37 CFR 1.63. Oath or declaration.

(a) An oath or declaration filed under § 1.51(b)(2) as a part of a nonprovisional application must:

(1) Be executed, i.e., signed, in accordance with either § 1.66 or § 1.68. There is no minimum age for a person to be qualified to sign, but the person must be competent to sign, i.e., understand the document that the person is signing;

(2) Identify each inventor by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial;

(3) Identify the country of citizenship of each inventor; and

(4) State that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.

(b) In addition to meeting the requirements of paragraph (a) of this section, the oath or declaration must also:

(1) Identify the application to which it is directed;

(2) State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims, as amended by any amendment specifically referred to in the oath or declaration; and

(3) State that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.

(c) Unless such information is supplied on an application data sheet in accordance with § 1.76, the oath or declaration must also identify:

(1) The mailing address, and the residence if an inventor lives at a location which is different from where the inventor customarily receives mail, of each inventor; and

(2) Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made pursuant to § 1.55, and any foreign application having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

(d)

(1) A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:

(i) The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section;

(ii) The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application;

(iii) The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and

(iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application.

(2) The copy of the executed oath or declaration submitted under this paragraph for a 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 in the continuation or divisional application.

(3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under § 1.47, the copy of the executed oath or declaration for such prior application must be accompanied by:

(i) A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under § 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and

(ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application.

(4) Where the power of attorney or correspondence address was changed during the prosecution of the prior application, the change in power of attorney or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney or correspondence address during the prosecution of the prior application.

(5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.

(e) A newly executed oath or declaration must be filed in any continuation-in-part application, which application may name all, more, or fewer than all of the inventors named in the prior application.


37 CFR 1.68. Declaration in lieu of oath.

Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration. Such declaration may be used in lieu of the oath otherwise required, if, and only if, the declarant is on the same document, warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant's own knowledge are true and that all statements made on information and belief are believed to be true.


18 U.S.C. 1001. Statements or entries generally.

Whoever, in any matter within the jurisdiction of any department or agency of the United States knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be fined not more than $10,000 or imprisoned not more than five years, or both.


A provisional application does not require an oath or declaration to be complete. See 37 CFR 1.51(c).

I.OATH

A seal is usually impressed on an oath. See 37 CFR 1.66, MPEP § 604 and § 604.01. Documents with seals cannot be adequately scanned for retention in an Image File Wrapper, and since the Office maintains patent applications in an image form, the Office strongly encourages the use of declarations rather than oaths. However, oaths executed in many states including Alabama, Louisiana, Maryland, Massachusetts, New Jersey, New York, Rhode Island, South Carolina, and Virginia need not be impressed with a seal. See MPEP § 604 for execution of an oath, and MPEP § 604.01 and § 604.02 for information regarding seals and venue.

II.STATUTORY DECLARATIONS

U.S. Patent and Trademark Office personnel are authorized to accept a statutory declaration under 28 U.S.C. 1746 filed in the U.S. Patent and Trademark Office in lieu of an "oath" or declaration under 35 U.S.C. 25 and 37 CFR 1.68, provided that the statutory declaration otherwise complies with the requirements of law.

A 37 CFR 1.68 declaration need not be ribboned to the other papers, even if signed in a country foreign to the United States. When a declaration is used, it is unnecessary to appear before any official in connection with the making of the declaration. It must, however, since it is an integral part of the application, be maintained together therewith.

By statute, 35 U.S.C. 25, the Director has been empowered to prescribe instances when a written declaration may be accepted in lieu of the oath for “any document to be filed in the Patent and Trademark Office.”

The filing of a written declaration is acceptable in lieu of an original application oath that is informal.

III.EARLIER FOREIGN APPLICATIONS

Oaths and declarations must make reference to any foreign application for patent (or inventor’s certificate) for which priority is claimed and any foreign application filed prior to the filing date of an application on which priority is claimed, unless such information is included in an application data sheet. See 37 CFR 1.63(c)(2).

If all foreign applications have been filed within 12 months of the U.S. filing date, applicant is required only to recite the first such foreign application of which priority is claimed, and it should be clear that the foreign application referred to is the first filed foreign application. The applicant is required to recite all foreign applications filed prior to the application on which priority is claimed. It is required to give the foreign application number and name of the country or office in which filed, as well as the filing date of the first filed foreign application.

IV.SOLE OR JOINT DESIGNATION

37 CFR 1.63 no longer requires the oath or declaration to state that the inventor is a sole or joint inventor of the invention claimed.

When joint inventors execute separate oaths or declarations, each oath or declaration should make reference to the fact that the affiant is a joint inventor together with each of the other inventors indicating them by name. This may be done by stating that he or she does verily believe himself or herself to be the original, first and joint inventor together with “A” or “A & B, etc.” as the facts may be.

V. NEW MATTER ISSUES

For applications filed on or after September 21, 2004, a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application. For applications filed before September 21, 2004, a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application if the preliminary amendment was referred to in the first executed oath or declaration under 37 CFR 1.63 filed in the application. See MPEP § 608.04(b) and § 714.01(e).

If a preliminary amendment is present on the filing date of an application, and the oath or declaration under 37 CFR 1.63 does not refer to the preliminary amendment, the normal operating procedure is to not screen the preliminary amendment to determine whether it contains subject matter not otherwise included in the specification or drawings of the application as filed (i.e., subject matter that is “new matter” relative to the specification and drawings of the application).

As a result, it is applicant’s obligation to review the preliminary amendment to ensure that it does not contain subject matter not otherwise included in the specification or drawings of the application as filed. If the preliminary amendment contains subject matter not otherwise included in the specification and drawings of the application, applicant must provide a supplemental oath or declaration under 37 CFR 1.67 referring to such preliminary amendment.

During examination, if an examiner determines that a preliminary amendment that is present on the filing date of the application includes subject matter not otherwise supported by the originally filed specification and drawings, and the oath or declaration does not refer to the preliminary amendment, the examiner may require the applicant to file a supplemental oath or declaration under 37 CFR 1.67 referring to the preliminary amendment.

In response to the requirement, applicant must submit (A) an oath or declaration that refers to the preliminary amendment, (B) an amendment that cancels the subject matter not supported by the originally filed specification and drawings, or (C) a request for reconsideration.

For applications filed prior to September 21, 2004, if the preliminary amendment was not referred to in the oath or declaration, applicant will be required to submit a supplemental oath or declaration under 37 CFR 1.67 referring to both the application and the preliminary amendment filed with the original application. A surcharge under 37 CFR 1.16(f) will also be required unless it has been previously paid.

If an oath or declaration improperly refers to an amendment filed after the filing date of the application and containing new matter, a supplemental oath or declaration will be required pursuant to 37 CFR 1.67(b), deleting the reference to the amendment containing new matter. See also MPEP § 608.04.

If the application papers are altered prior to the execution of the oath or declaration and the filing of the application, new matter is not a consideration since the alteration is considered as part of the original disclosure.

If a claim is presented for matter not originally claimed or embraced in the original statement of invention in the specification a supplemental oath or declaration is required, 37 CFR 1.67, MPEP § 603.

VI. IDENTIFICATION OF APPLICATION

37 CFR 1.63 requires that an oath or declaration identify the specification to which it is directed, by giving information such as the names of the inventors, title of the invention, application number, attorney docket number, filing date, and foreign priority application information.

Filing dates are granted on applications filed without an oath or declaration in compliance with 37 CFR 1.63, the oath or declaration being filed later with a surcharge.

Any specification that is filed attached to an oath or declaration on a date later than the application filing date will not be compared with the specification submitted on filing. Absent any statement(s) to the contrary, the "attached" specification will be presumed to be a copy of the specification and any amendments thereto, which were filed in the USPTO in order to obtain a filing date for the application.

Any variance from the above guidelines will only be considered upon the filing of a petition for waiver of the rules under 37 CFR 1.183 accompanied by a petition fee (37 CFR 1.17(f)).

Further an oath or declaration attached to a cover letter referencing an incorrect application may not become associated with the correct application and, therefore, could result in the abandonment of the correct application.

Supplemental oaths or declarations in accordance with 37 CFR 1.67 will be required in applications in which the oaths or declarations are not in compliance with the other requirements of 37 CFR 1.63 but contain sufficient information to identify the specifications to which they apply as detailed above.

602.01 Oath Cannot Be Amended[edit | edit source]

The wording of an oath or declaration cannot be amended, altered or changed in any manner after it has been signed. If the wording is not correct or if all of the required affirmations have not been made, or if it has not been properly subscribed to, a new oath or declaration must be required. However, in some cases, a deficiency in the oath or declaration can be corrected by a supplemental paper such as an application data sheet (see 37 CFR 1.76 and MPEP § 601.05) and a new oath or declaration is not necessary. See 37 CFR 1.63(c)(1) and (c)(2).

602.02 New Oath or Substitute for Original[edit | edit source]

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 Defective Oath or Declaration[edit | edit source]

In the first Office action the examiner must point out every deficiency in a declaration or oath and require that the same be remedied.

When an application is otherwise ready for issue, an examiner with full signatory authority may waive minor deficiencies in the body of the oath or declaration where the deficiencies are self-evidently cured in the rest of the oath or declaration.

Of course, requirements of the statute, e.g., that the applicant state his or her citizenship or believes himself or herself to be the original and first inventor or that the oath be administered before a person authorized to administer oaths or that a declaration pursuant to 35 U.S.C. 25 or contain the language required therein, cannot be waived.

602.04 Foreign Executed Oath[edit | edit source]

An oath executed in a foreign country must be properly authenticated. See 37 CFR 1.66 and MPEP § 604.

602.04(a) Foreign Executed Oath Is Ribboned to Other Application Papers[edit | edit source]

37 CFR 1.66. Officers authorized to administer oaths.
.          .          .

(b)When the oath is taken before an officer in a country foreign to the United States, any accompanying application papers, except the drawings, must be attached together with the oath and a ribbon passed one or more times through all the sheets of the application, except the drawings, and the ends of said ribbon brought together under the seal before the latter is affixed and impressed, or each sheet must be impressed with the official seal of the officer before whom the oath is taken. If the papers as filed are not properly ribboned or each sheet impressed with the seal, the case will be accepted for examination, but before it is allowed, duplicate papers, prepared in compliance with the foregoing sentence, must be filed.


U.S. ACCESSION TO HAGUE CONVENTION ABOLISHING THE REQUIREMENT OF LEGALIZATION FOR FOREIGN PUBLIC DOCUMENTS

The Office will accept for filing or recording a document sworn to or acknowledged before a notary public in a member country if the document bears, or has appended to it, an apostille certifying the notary’s authority. The requirement for a diplomatic or consular certificate, specified in 37 CFR 1.66, will not apply to a document sworn to or acknowledged before a notary public in a member country if an apostille is used.

602.05 Oath or Declaration — Date of Execution[edit | edit source]

The Office no longer checks the date of execution of the oath or declaration and the Office will no longer require a newly executed oath or declaration based on an oath or declaration being stale (that is when the date of execution is more than 3 months prior to the filing date of the application) or where the date of execution has been omitted. However, applicants are reminded that they have a continuing duty of disclosure under 37 CFR 1.56.

602.05(a) Oath or Declaration in Continuation and Divisional Applications[edit | edit source]

A continuation or divisional application filed under 37 CFR 1.53(b) (other than a continuation-in-part (CIP)) may be filed with a copy of the oath or declaration from the prior nonprovisional application. See 37 CFR 1.63(d)(1)(iv).

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. See 37 CFR 1.52(c)(3).

If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action. The examiner should also (A) require a new oath or declaration along with the surcharge set forth in 37 CFR 1.16(f); and (B) indicate that the application should be redesignated as a continuation- in-part.

A continuation or divisional application of a prior application accorded status under 37 CFR 1.47 will be accorded status under 37 CFR 1.47 if a copy of the decision according 37 CFR 1.47 status in the prior application is filed in the continuation or divisional application, unless an oath or declaration signed by all of the inventors is included upon filing the continuation or divisional application. An oath or declaration in an application accorded status under 37 CFR 1.47is generally not signed by all of the inventors.

Accordingly, if a copy of an oath or declaration of a prior application is submitted in a continuation or divisional application filed under 37 CFR 1.53(b) and the copy of the oath or declaration omits the signature of one or more inventors, the Office of Initial Patent Examination (OIPE) should send a “Notice to File Missing Parts” requiring the signature of the nonsigning inventor, unless a copy of the decision according status under 37 CFR 1.47 is also included at the time of filing of the continuation or divisional application. If OIPE mails such a Notice, a copy of the decision according status under 37 CFR 1.47, together with a surcharge under 37 CFR 1.16(f) for its late filing, will be an acceptable reply to the Notice. Alternatively, applicant may submit an oath or declaration signed by the previously nonsigning inventor together with the surcharge set forth in 37 CFR 1.16(f) in reply to the Notice.

If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(b), the continuation or divisional application may either be filed (A) 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 (see 37 CFR 1.63(d)), or (B) 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), 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 (see 37 CFR 1.53(d)(4)).

A continuation or divisional application filed under 37 CFR 1.53(b) of a prior application in which a petition (or request) under 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. A copy of any decision under 37 CFR 1.48 from the prior application is not required to be filed in the continuation or divisional application.

602.06 Non-English Oath or Declaration[edit | edit source]

37 CFR 1.69. Foreign language oaths and declarations.

(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.


37 CFR 1.69 requires that oaths and declarations be in a language which is understood by the individual making the oath or declaration, i.e., a language which the individual comprehends. If the individual comprehends the English language, he or she should preferably use it. 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.

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