35 U.S.C. § 115 — Inventor’s oath or declaration

Page 49 TITLE 35—PATENTS § 115 EFFECTIVE DATE OF 1965 AMENDMENT Amendment by Pub. L. 89–83 effective three months after July 24, 1965, see section 7(a) of Pub. L. 89–83, set out as a note under section 41 of this title. § 113. Drawings The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice there- of. Drawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inad- equate disclosure therein, or (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim. (July 19, 1952, ch. 950, 66 Stat. 799; Pub. L. 94–131, § 8, Nov. 14, 1975, 89 Stat. 691; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 34, part (R.S. 4889, amended Mar. 3, 1915, ch. 94, § 2, 38 Stat. 958). The requirement for signature in the corresponding section of existing statute is omitted; regulations of the Patent Office can take care of any substitute. A re- dundant clause is omitted. Editorial Notes AMENDMENTS 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’. 1975—Pub. L. 94–131 substituted provisions respecting drawings requiring necessary-for-understanding draw- ings and submission of drawings within prescribed time period and limiting use of drawings submitted after fil- ing date of application for prior provision requiring the applicant to furnish a drawing when the nature of the case admitted it. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE OF 1975 AMENDMENT Amendment by Pub. L. 94–131 effective Jan. 24, 1978, and applicable on and after that date to patent applica- tions filed in the United States and to international ap- plications, where applicable, see section 11 of Pub. L. 94–131, set out as an Effective Date note under section 351 of this title. § 114. Models, specimens The Director may require the applicant to fur- nish a model of convenient size to exhibit advan- tageously the several parts of his invention. When the invention relates to a composition of matter, the Director may require the appli- cant to furnish specimens or ingredients for the purpose of inspection or experiment. (July 19, 1952, ch. 950, 66 Stat. 799; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 34, part (R.S. 4890 and 4891). The change in language in the second paragraph broadens the requirement for specimens. Editorial Notes AMENDMENTS 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ in two places. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. § 115. Inventor’s oath or declaration (a) NAMING THE INVENTOR; INVENTOR’S OATH OR DECLARATION.—An application for patent that is filed under section 111(a) or commences the na- tional stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint in- ventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application. (b) REQUIRED STATEMENTS.—An oath or dec- laration under subsection (a) shall contain statements that— (1) the application was made or was author- ized to be made by the affiant or declarant; and (2) such individual believes himself or her- self to be the original inventor or an original joint inventor of a claimed invention in the application. (c) ADDITIONAL REQUIREMENTS.—The Director may specify additional information relating to the inventor and the invention that is required to be included in an oath or declaration under subsection (a). (d) SUBSTITUTE STATEMENT.— (1) IN GENERAL.—In lieu of executing an oath or declaration under subsection (a), the appli- cant for patent may provide a substitute statement under the circumstances described in paragraph (2) and such additional cir- cumstances that the Director may specify by regulation. (2) PERMITTED CIRCUMSTANCES.—A substitute statement under paragraph (1) is permitted with respect to any individual who— (A) is unable to file the oath or declaration under subsection (a) because the individual— Page 50 TITLE 35—PATENTS § 115 (i) is deceased; (ii) is under legal incapacity; or (iii) cannot be found or reached after diligent effort; or (B) is under an obligation to assign the in- vention but has refused to make the oath or declaration required under subsection (a). (3) CONTENTS.—A substitute statement under this subsection shall— (A) identify the individual with respect to whom the statement applies; (B) set forth the circumstances rep- resenting the permitted basis for the filing of the substitute statement in lieu of the oath or declaration under subsection (a); and (C) contain any additional information, in- cluding any showing, required by the Direc- tor. (e) MAKING REQUIRED STATEMENTS IN ASSIGN- MENT OF RECORD.—An individual who is under an obligation of assignment of an application for patent may include the required statements under subsections (b) and (c) in the assignment executed by the individual, in lieu of filing such statements separately. (f) TIME FOR FILING.—The applicant for patent shall provide each required oath or declaration under subsection (a), substitute statement under subsection (d), or recorded assignment meeting the requirements of subsection (e) no later than the date on which the issue fee for the patent is paid. (g) EARLIER-FILED APPLICATION CONTAINING REQUIRED STATEMENTS OR SUBSTITUTE STATE- MENT.— (1) EXCEPTION.—The requirements under this section shall not apply to an individual with respect to an application for patent in which the individual is named as the inventor or a joint inventor and that claims the benefit under section 120, 121, 365(c), or 386(c) of the filing of an earlier-filed application, if— (A) an oath or declaration meeting the re- quirements of subsection (a) was executed by the individual and was filed in connection with the earlier-filed application; (B) a substitute statement meeting the re- quirements of subsection (d) was filed in connection with the earlier filed application with respect to the individual; or (C) an assignment meeting the require- ments of subsection (e) was executed with respect to the earlier-filed application by the individual and was recorded in connec- tion with the earlier-filed application. (2) COPIES OF OATHS, DECLARATIONS, STATE- MENTS, OR ASSIGNMENTS.—Notwithstanding paragraph (1), the Director may require that a copy of the executed oath or declaration, the substitute statement, or the assignment filed in connection with the earlier-filed applica- tion be included in the later-filed application. (h) SUPPLEMENTAL AND CORRECTED STATE- MENTS; FILING ADDITIONAL STATEMENTS.— (1) IN GENERAL.—Any person making a state- ment required under this section may with- draw, replace, or otherwise correct the state- ment at any time. If a change is made in the naming of the inventor requiring the filing of 1 or more additional statements under this section, the Director shall establish regula- tions under which such additional statements may be filed. (2) SUPPLEMENTAL STATEMENTS NOT RE- QUIRED.—If an individual has executed an oath or declaration meeting the requirements of subsection (a) or an assignment meeting the requirements of subsection (e) with respect to an application for patent, the Director may not thereafter require that individual to make any additional oath, declaration, or other statement equivalent to those required by this section in connection with the application for patent or any patent issuing thereon. (3) SAVINGS CLAUSE.—A patent shall not be invalid or unenforceable based upon the fail- ure to comply with a requirement under this section if the failure is remedied as provided under paragraph (1). (i) ACKNOWLEDGMENT OF PENALTIES.—Any dec- laration or statement filed pursuant to this sec- tion shall contain an acknowledgment that any willful false statement made in such declaration or statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both. (July 19, 1952, ch. 950, 66 Stat. 799; Pub. L. 97–247, § 14(a), Aug. 27, 1982, 96 Stat. 321; Pub. L. 105–277, div. G, title XXII, § 2222(d), Oct. 21, 1998, 112 Stat. 2681–818; Pub. L. 112–29, § 4(a)(1), Sept. 16, 2011, 125 Stat. 293; Pub. L. 112–211, title I, § 102(4), Dec. 18, 2012, 126 Stat. 1531; Pub. L. 112–274, § 1(f), Jan. 14, 2013, 126 Stat. 2456.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 35 (R.S. 4892, amended (1) Mar. 3, 1903, ch. 1019, § 2, 32 Stat. 1225, 1226, (2) May 23, 1930, ch. 312, § 3, 46 Stat. 376). The expression at the end of the second sentence is added to avoid application of the District of Columbia law to oaths taken outside the District. Changes in language are made. Editorial Notes AMENDMENTS 2013—Subsec. (f). Pub. L. 112–274, § 1(f)(1), added sub- sec. (f) and struck out former subsec. (f). Prior to amendment, text read as follows: ‘‘A notice of allow- ance under section 151 may be provided to an applicant for patent only if the applicant for patent has filed each required oath or declaration under subsection (a) or has filed a substitute statement under subsection (d) or recorded an assignment meeting the requirements of subsection (e).’’ Subsec. (g)(1). Pub. L. 112–274, § 1(f)(2), substituted ‘‘that claims’’ for ‘‘who claims’’ in introductory provi- sions. 2012—Subsec. (g)(1). Pub. L. 112–211 substituted ‘‘sec- tion 120, 121, 365(c), or 386(c)’’ for ‘‘section 120, 121, or 365(c)’’ in introductory provisions. 2011—Pub. L. 112–29 amended section generally. Prior to amendment, text read as follows: ‘‘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 improve- ment 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 au- thorized by law to administer oaths, or, when, made in a foreign country, before any diplomatic or consular of- ficer of the United States authorized to administer oaths, or before any officer having an official seal and Page 51 TITLE 35—PATENTS § 116 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 des- ignated by a foreign country which, by treaty or con- vention, accords like effect to apostilles of designated officials in the United States, and such oath shall be valid if it complies with the laws of the state or coun- try where made. When the application is made as pro- vided 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 over- seas, authorized to perform notarial functions pursuant to section 1750 of the Revised Statutes, as amended (22 U.S.C. 4221).’’ 1998—Pub. L. 105–277 inserted at end ‘‘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 Re- vised Statutes, as amended (22 U.S.C. 4221).’’ 1982—Pub. L. 97–247 substituted ‘‘is’’ for ‘‘shall be’’ after ‘‘whose authority’’, and inserted ‘‘, 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’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2013 AMENDMENT Amendment by Pub. L. 112–274 effective Jan. 14, 2013, and applicable to proceedings commenced on or after such date, see section 1(n) of Pub. L. 112–274, set out as a note under section 5 of this title. EFFECTIVE DATE OF 2012 AMENDMENT Amendment by Pub. L. 112–211 effective on the later of the date that is 1 year after Dec. 18, 2012, or the date that the Geneva Act of the Hague Agreement Con- cerning the International Registration of Industrial Designs enters into force with respect to the United States (May 13, 2015), and applicable only to certain ap- plications filed on and after that effective date and pat- ents issuing thereon, see section 103 of Pub. L. 112–211, set out as a note under section 100 of this title. EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent application that is filed on or after that effective date, see section 4(e) of Pub. L. 112–29, set out as a note under section 111 of this title. EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–247 effective Aug. 27, 1982, see section 17(a) of Pub. L. 97–247, set out as a note under section 41 of this title. § 116. Inventors (a) JOINT INVENTIONS.—When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the re- quired oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work to- gether or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. (b) OMITTED INVENTOR.—If a joint inventor re- fuses to join in an application for patent or can- not be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application. (c) CORRECTION OF ERRORS IN APPLICATION.— Whenever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an ap- plication, the Director may permit the applica- tion to be amended accordingly, under such terms as he prescribes. (July 19, 1952, ch. 950, 66 Stat. 799; Pub. L. 97–247, § 6(a), Aug. 27, 1982, 96 Stat. 320; Pub. L. 98–622, title I, § 104(a), Nov. 8, 1984, 98 Stat. 3384; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, § 20(a), Sept. 16, 2011, 125 Stat. 333.) HISTORICAL AND REVISION NOTES The first paragraph is implied in the present statutes, and the part of the last paragraph relating to omission of an erroneously joined inventor is in the Patent Of- fice rules. The remainder is new and provides for the correction of a mistake in erroneously joining a person as inventor, and for filing an application when one of several joint inventors cannot be found. This section is ancillary to section 256. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 designated first to third pars. as subsecs. (a) to (c), respectively, inserted headings, and, in subsec. (c), struck out ‘‘and such error arose without any deceptive intention on his part,’’ before ‘‘the Direc- tor’’. 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ in two places. 1984—Pub. L. 98–622 amended first par. generally, striking out ‘‘and each sign the application’’ after ‘‘patent jointly’’ and inserting sentence beginning ‘‘In- ventors may apply’’. 1982—Pub. L. 97–247 substituted ‘‘Inventors’’ for ‘‘Joint inventors’’ as section catchline, and substituted ‘‘through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application’’ for ‘‘a person is joined in an application for patent as joint inventor through error, or a joint inventor is not included in an applica- tion through error’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE OF 1984 AMENDMENT Amendment by Pub. L. 98–622 applicable to all United States patents granted before, on, or after Nov. 8, 1984,