Declaration of Inventorship

The inventor's oath or declaration is a mandatory submission for every US patent application: STATUTE — 35 U.S.C. § 115: 'An application for patent that is filed by other than the inventor must be accompanied by a statement of the inventor' (prior to AIA: 'the applicant shall make oath that he believes himself to be the original and first inventor'); POST-AIA § 115 REQUIREMENTS: each inventor must submit an oath or declaration that: (1) identifies the individual who invented or discovered the claimed invention; (2) states that the individual authorized the filing of the application; (3) states the individual's belief that they are an original inventor of the claimed invention; SIMPLIFIED POST-AIA REQUIREMENTS: the AIA (effective September 16, 2012) simplified the inventor declaration by REMOVING pre-AIA requirements to: acknowledge citizenship; acknowledge country of residence; state the 'first and true inventor' (changed to 'original inventor'); WHAT THE DECLARATION STILL REQUIRES: a statement that the applicant has reviewed and understands the contents of the application; a statement acknowledging a duty to disclose information material to patentability; identification of each inventor by legal name; identification of the application (title; application number; or attachment of the application); OATH vs. DECLARATION: OATH: sworn before a notary or authorized officer; traditionally required for international applications and some circumstances; DECLARATION: a 37 C.F.R. § 1.68 declaration under penalty of false statements (18 U.S.C. § 1001); does not require notarization; most US applications now use declarations; the penalties for false statements in a declaration are the same as for a false oath; WHEN TO FILE: the oath/declaration can be filed with the application or as a later submission; a Preliminary Amendment must await the declaration before examination begins if filed without a signed declaration (a.k.a. 'micro-entity' track); ELECTRONIC SIGNATURE: the USPTO accepts electronic signatures on declarations.

The AIA introduced substitute statements to handle non-cooperative inventors: PRE-AIA PROBLEM: before the AIA, every named inventor had to sign the oath/declaration; if an inventor refused to sign; could not be located; had died; or was legally incapacitated, the applicant faced significant delays and potential abandonment; PRE-AIA WORKAROUND: if an inventor refused to sign, the other inventors could petition for a modified oath — but this was procedurally complex and time-consuming; AIA SUBSTITUTE STATEMENT — 37 C.F.R. § 1.64: under post-AIA law, a substitute statement may be filed in lieu of an inventor's oath or declaration when the inventor: (1) is DECEASED; (2) is legally INCAPACITATED; (3) CANNOT BE FOUND or reached after diligent effort; (4) is UNWILLING to make the statement (i.e., refuses to cooperate); WHO CAN SIGN THE SUBSTITUTE STATEMENT: a legal representative of the deceased or incapacitated inventor (executor; administrator; guardian; legal representative); any joint inventor; an applicant who is not an inventor but is entitled to file the application (an assignee; an obligated assignee; a person who shows sufficient proprietary interest); DILIGENT EFFORT REQUIRED: to use the 'cannot be found' basis, the applicant must make a diligent effort to contact the inventor; documentation of the effort is recommended; WHAT THE SUBSTITUTE STATEMENT MUST STATE: the circumstances that permit the substitute statement to be used; the signatory's relationship to the inventor; that the signatory is authorized to sign; ASSIGNMENT-IN-LIEU OF DECLARATION (37 C.F.R. § 1.63(e)): an applicant who is an assignee of the inventor may file an assignment of the invention along with an Application Data Sheet (ADS) in lieu of the inventor's declaration; the assignment must be executed by the inventor; this works well when the inventor assigned all rights to the employer but is on vacation or otherwise temporarily unavailable; PRACTICAL USE: startup companies with departed co-founders; acquisitions of companies where former employees were inventors; deceased or incapacitated inventors in continuation applications.

Joint inventorship is defined by conception, not by who performed the experiments: STATUTORY DEFINITION — 35 U.S.C. § 116: 'when an invention is made by two or more persons jointly, they shall apply for patent jointly'; WHAT CONSTITUTES JOINT INVENTORSHIP: COLLABORATION IN CONCEPTION: joint inventors must have COLLABORATED in the conception (mental act) of the invention; they need not have worked together at the same time; need not have made the same type or amount of contribution; need not physically worked together; KEY REQUIREMENT — CONTRIBUTION TO CONCEPTION: each joint inventor must contribute to the conception of at least one claim in the patent; contribution to reduction to practice (building and testing) WITHOUT contribution to the inventive concept is NOT enough for inventorship; the technician who builds what the inventor conceived is NOT a co-inventor; WHAT DOES NOT CREATE JOINT INVENTORSHIP: providing funding (investors are not co-inventors); providing laboratory space or equipment; providing technical assistance in building a prototype; suggesting that the problem is worth solving (without suggesting the solution); reviewing and approving the invention without contributing to the concept; MOBA v. AUTOMATION (Fed. Cir. 2000): a person is a co-inventor if they contribute to the conception of at least one claim; different claims in a patent can have different inventors; a co-inventor does not need to contribute to EVERY claim, just at LEAST one; CO-INVENTOR RIGHTS: joint inventors are co-owners of the patent unless they have agreed otherwise; each co-owner can independently license the patent without the other co-owners' consent (35 U.S.C. § 262); each co-owner can grant non-exclusive licenses independently; to grant EXCLUSIVE licenses, all co-owners must agree; a co-owner can sue an infringer but may need the other co-owners to join the suit; EMPLOYER CONSIDERATIONS: employee inventors are often required by PIIA (Proprietary Information and Invention Assignment Agreement) to assign all inventions to the employer; even if both co-inventors assign to the same employer, the co-ownership rules matter for chain of title analysis.

Inventorship errors are serious but generally correctable — fraudulent inventorship is not: TYPES OF INVENTORSHIP ERRORS: MISJOINDER: a non-inventor was listed as an inventor (someone who did not contribute to the conception of any claim); NONJOINDER: a true inventor was omitted from the application; CONSEQUENCES OF INVENTORSHIP ERRORS: an issued patent with incorrect inventorship can be held INVALID and UNENFORCEABLE; courts have the power to hold a patent unenforceable where inventorship was fraudulently misrepresented; INEQUITABLE CONDUCT: intentional misrepresentation of inventorship to the USPTO = inequitable conduct → unenforceable patent (broader than invalidity — entire patent unenforceable, not just certain claims); OWNERSHIP CONSEQUENCES: if a co-inventor was omitted and later discovered, the omitted co-inventor owns an undivided share of the patent; the omitted co-inventor (or their assignee) could independently license the patent to competitors; an employer who didn't get an assignment from the omitted co-inventor could face co-ownership problems; CORRECTING INVENTORSHIP BEFORE ISSUANCE: 35 U.S.C. § 116; 37 C.F.R. § 1.48: petition to correct inventorship; must show the error arose without deceptive intention; new inventor must sign a declaration; if an inventor is added, must show they were inadvertently omitted; CORRECTING INVENTORSHIP AFTER ISSUANCE — § 256: 35 U.S.C. § 256: allows correction of inventorship in issued patents; must show the error arose without any deceptive intention on the part of the erroneously added or omitted inventor; certificate of correction issued; FRAUDULENT MISREPRESENTATION: if the inventorship error was INTENTIONAL (fraudulent omission of a true inventor; adding a non-inventor for business reasons), the error may not be correctable under § 116 or § 256; courts may invalidate the patent; the fraudulent party may face criminal liability (false statements in a declaration = 18 U.S.C. § 1001); WHAT STANFORD v. ROCHE MEANS FOR INVENTORSHIP AND OWNERSHIP: Stanford v. Roche (S.Ct. 2011): inventorship ≠ ownership; the AIA's first-to-file rule changed priority but not inventorship; an inventor's employer does NOT automatically own the invention — the inventor assigns ownership to the employer via a PIIA agreement; inventorship (who invented) and ownership (who holds title) are separate legal concepts.

International jurisdictions have different inventor declaration requirements: EUROPEAN PATENT OFFICE (EPO): EPO applications must designate the inventor in the Request for Grant; the inventor must be a natural person (legal entities cannot be inventors); the applicant need not be the inventor (separate ownership concept); the inventor has the right to be named (moral right); the 'right to be named' cannot be waived by contract in most EPO member states; EPO does not require a signed declaration from the inventor (unlike USPTO); the applicant self-certifies the inventor's identity; JAPAN PATENT OFFICE (JPO): inventors must be identified in the application; the inventor must be a natural person; strict joint inventorship standards (contribution to conception required); a company filing as applicant does not need the inventor's signature on the application; inventorship fraud can invalidate a patent in Japan; CHINA — CNIPA: inventors must be identified; the inventor's name appears on the patent; inventors have moral rights (right to be named); employers are entitled to the invention (employee invention doctrine) under Chinese Patent Law Article 6; employers must compensate inventors for employee inventions (compensation requirements); the inventor cannot waive the compensation right in a contract in China; MORAL RIGHT vs. ECONOMIC RIGHT: in many civil law countries (Germany; France; Japan; China), inventors have a MORAL RIGHT to be named as the inventor (non-waivable) regardless of who owns the patent; the US lacks a statutory moral right (though naming inventors correctly is required for patent validity); LEGAL IMPLICATIONS FOR MULTINATIONALS: a company must ensure: that all true inventors are identified and named in applications worldwide; that employee inventors have valid assignments to the company (or that law automatically assigns under employee invention law); that in countries with mandatory inventor compensation (China; Germany; Japan), the compensation requirements are met; EMPLOYEE INVENTION LAW: most developed countries have rules governing who owns employee inventions; the rules differ significantly: US: employer owns under 'employed to invent' doctrine + PIIA contracts; Germany: employer owns with mandatory reasonable compensation to inventor; Japan: mandatory reasonable compensation (employer can contract for a default); China: mandatory compensation (cannot be waived).