The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012. These new provisions went into effect on September 16, 2012 and apply to all non-PCT U.S. patent applications filed under 35 U.S.C.§ 111(a) (including continuing and PCT bypass applications) filed on or after September 16, 2012. These provisions are applicable to oaths and declarations in design, plant, and reissue applications irrespective of the fact that they are not filed under 35 U.S.C.§ 111(a).
Forms are now available for download. Our old forms are also available since for PCT national stage applications, the new inventor's oath/declaration provisions only apply to applications having an international filing date on or after September 16, 2012. Accordingly, the old inventor oath/declaration forms should be used for any such national stage applications with an international filing date prior to September 16, 2012.
You will notice that there are now several options available: A combined Declaration/Assignment document or a Declaration document that will need to be filed with a separate Assignment instrument. In both cases a separate Power of Attorney form will need to be submitted. These forms are available on our "Download" tab above. The other noticeable change is that as a result of the new requirement for an Application Data Sheet to be submitted with all new applications, the Declaration form itself contains only very basic information, and each inventor signs his or her own copy of the Declaration or Declaration/Assignment form. All of the signed forms are then submitted to the USPTO.
Regarding the Power of Attorney, if an assignee files an application as the applicant, a Power of Attorney by Applicant form should be signed by a party authorized to act on behalf of the assignee. After a company provides our firm with an executed Power of Attorney by Applicant, it will not be necessary to provide us any further Power of Attorney forms for future filings of patent applications on behalf of that assignee so long as the assignee is the applicant in those cases. Accordingly, a copy of the Power of Attorney by Applicant will be filed along with a Transmittal form, which our firm will prepare and execute, identifying a specific application for the Power of Attorney.
Similarly, if there is no assignee, or if the assignee has opted not to file the application and not to take over prosecution to the exclusion of the Inventor(s), the Inventor(s) and/or an Inventor’s Legal Representative (if an Inventor is deceased or legally incapacitated) are the applicants and should execute the Power of Attorney by Applicant . This will grant our firm Power of Attorney for one specific patent application identified in an attached Transmittal form, which we will prepare and execute. If, however, the Inventor(s) are the original applicants of an application and an assignee or assignees wishes to take over prosecution to the exclusion of the Inventor(s), a representative of the company, i.e., the assignee, should execute a Power of Attorney to Prosecute to be filed along with a Statement Under § 3.73(c) establishing ownership of the application. To establish ownership, any Assignment from the Inventor(s) must be recorded concurrently with or prior to the filing of the Power of Attorney to Prosecute. Please note that the filing of an ADS with a new application sets forth the identification of the applicant. Where an application is filed without indentifying an assignee(s) as the applicant, the USPTO identifies the inventor(s) as the applicant. Under such circumstances, if the assignee wishes to be identified as the applicant, then the assignee(s) would need to execute a Power of Attorney to Prosecute to be filed along with along with a Statement Under § 3.73(c) rather than a Power of Attorney by Applicant.
- Power of Attorney Flowchart
- Inventor Declaration for Utility or Design Application and Assignment for Single Assignee
- Inventor Declaration for Utility or Design Application and Assignment for Multiple Assignees
- Power of Attorney by Applicant (Inventor) - Use this form when the Inventor is granting Power of Attorney
- Power of Attorney by Applicant (Assignee)- Use this form when the Assignee is granting Power of Attorney
- Power of Attorney to Prosecute Applications Before the USPTO - Use this form if the Assignee wishes to take over prosecution to the exclusion of the Inventor(s)
- Inventor Declaration for Utility or Design Application
- Inventor Declaration for Plant Application
- Supplemental Sheet for Declaration and Assignment Forms
- Japanese Declaration and Assignment with Supplemental Sheet
- Japanese Declaration and Assignment - Multiple Assignees