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37 CFR § 1.63 - Inventor's oath or declaration.

(a) The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided for in § 1.64 . An oath or declaration under this section must:

(1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;

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

(3) Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and

(4) State that the application was made or was authorized to be made by the person executing the oath or declaration.

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

(1) Each inventor by his or her legal name; and

(2) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.

(c) A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56 . There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing.

(1) A newly executed oath or declaration under § 1.63 , or substitute statement under § 1.64 , is not required under §§ 1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.

(2) The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.

(3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64 .

(1) An assignment may also serve as an oath or declaration required by this section if the assignment as executed:

(i) Includes the information and statements required under paragraphs (a) and (b) of this section; and

(ii) A copy of the assignment is recorded as provided for in part 3 of this chapter.

(2) Any reference to an oath or declaration under this section includes an assignment as provided for in this paragraph.

(f) With respect to an application naming only one inventor, any reference to the inventor's oath or declaration in this chapter includes a substitute statement executed under § 1.64 . With respect to an application naming more than one inventor, any reference to the inventor's oath or declaration in this chapter means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless otherwise clear from the context.

(g) An oath or declaration under this section, including the statement provided for in paragraph (e) of this section, must be executed ( i.e., signed) in accordance either with § 1.66 or with an acknowledgment that any willful false statement made in such declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.

(h) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1) will be placed in the file record of the application or patent, but may not necessarily be reviewed by the Office. Any request for correction of the named inventorship must comply with § 1.48 in an application and § 1.324 in a patent.

August 15, 2012

USPTO Issues Final Rules: Inventor’s Oath or Declaration

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US Inventor Declarations and Assignments

After a patent application has been filed, the inventor may be required to sign and submit various forms. What happens if this is several years into the patent process, and the inventor can no longer be reached to sign these forms? And what can you do now to prevent any complications from arising?

One country which requires the inventor to submit signed forms is the USA. Each inventor named on the application must submit a signed declaration and assignment with the US Patent and Trademark Office before payment of the Issue Fee.

What are US Declarations and Assignments?

An inventor declaration confirms the inventor’s belief that they are the original (or joint original) inventor of the claimed invention. If an inventor declaration is not submitted by each inventor before payment of the Issue Fee, the application will be abandoned.

An assignment provides documentary evidence that the rights in the invention have been transferred from the inventor to the applicant, and that the applicant is the rightful owner of any patent granted for the claimed invention. If a signed assignment is not submitted by each inventor before payment of the Issue Fee, the application could grant in the name of the inventor(s) instead of the applicant, although this can usually be rectified post-grant.

What if the inventor cannot or will not sign these forms?

In cases where the US application is filed later in the patent process, such as at the 12 month convention deadline, or even the 30 month national phase deadline, it is possible that the inventor(s) may no longer be available to sign the required forms (for example, they have left the company). What happens then?

A substitute statement can be submitted in lieu of a declaration if an inventor is deceased, is under legal incapacity, has refused to sign the declaration, or cannot be found or reached after a diligent effort. To demonstrate a “ diligent effort ”, it is usually sufficient to send a copy of the forms to the inventor’s last known address, along with an explanation of what is required and specifying a reasonable time-period for returning the signed forms (for example, 28 days). If the forms are not returned by the end of this period, then it can be assumed that the inventor is no longer reachable.

If an inventor cannot or will not sign the required assignment to transfer their rights in the invention to the applicant, then one possible option where the inventor is an employee of the applicant is to submit their employment agreement in lieu of the assignment. However, for the purposes of the USA, the employment agreement must address the employee’s obligation to assign any Intellectual Property (IP) rights created during their employment to their employer. Ideally the document should contain language which indicates a present and active intent to assign any IP rights (for example, “ I hereby assign… ”), rather than language which merely indicates an intent to assign any IP rights in the future (for example, “ I agree to assign… ”).

If the employment agreement does not contain suitable language, one option is to rely on any local IP laws which legally require the employee to assign any IP rights to their employer. For example, in the UK, section 39 of the Patents Act 1977 states that an invention made by an employee will automatically belong to the employer if:

“ (a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or

(b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer’s undertaking. ”

Therefore, if the employee and the employer are based in the UK and the invention falls into category (a) or (b) above, then the invention will automatically belong to the employer under UK law.

As such, in addition to filing a copy of the employment contract, a copy of the relevant local laws and a memorandum explaining why, under local law, the invention belongs to the employer can also be filed to prove full ownership of the application by the applicant.

What can the applicant do to avoid the above complications?

1/ Make use of PCT declarations if filing an International application, particularly:

(i) the declaration as to the identity of the inventor;
(ii) the declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent; and,
(iv) the declaration of inventorship (for the purposes of the designation of the USA).

For example, declaration (ii) satisfies the proof of right requirements in the Indian national phase, and (iv) satisfies the declaration requirements in the US national phase. Declarations (i) and (ii) can be signed off by the acting attorney; declaration (iv) however must be signed by each inventor.

2/ Make sure any employment agreements, particularly for research & development staff, clearly address the employee’s obligation to assign any IP rights created, and include language which actively and presently assigns those rights to the employer.

If existing employment agreements do not contain such clauses, a separate agreement can be drawn up for the employee to sign and then appended to their contract.

3/ Include a clause in the employment agreement requiring the employee to sign any necessary forms both during and after their employment. This contractual agreement can be referred to should the employee actively refuse to sign any required forms later in the patent process.

Taking the above actions now can help to avoid any problems later in the patenting process which will likely incur unnecessary costs to rectify. Should you require any assistance or advice, please contact me at christina .schiavone@ wynne-jones .com .

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IP Law Bulletin

The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012. One such change is the ability to incorporate an inventor’s required declaration statements into an assignment document, thereby reducing the number of documents that must be executed by an inventor in connection with filing a patent application. If an applicant elects to go this route, a single combined declaration and assignment document can be recorded at the United States Patent and Trademark Office (USPTO) and a copy will be automatically placed in the application’s file wrapper. It appears to be the case, however, that this automatic copying by the USPTO of the combined declaration and assignment into the file wrapper for an application triggers a Notice of Incomplete Reply if there is an outstanding Notice to File Missing Parts or Notice to File Corrected Application Papers that identifies a deficiency in addition to the lack of an oath/declaration—despite the fact that the applicant has not made any reply to such a notice.

This scenario has now been encountered several times in practice and appears to track the following exemplary timeline: An application is filed that does not include an inventor’s oath/declaration and also has some other deficiency that prompts the USPTO to issue a Notice to File Corrected Application Papers or a Notice to File Missing Parts. Examples of deficiencies that prompt such a notice can include an omission of required fees, submission of non-conforming drawings, etc. The notice sets out a period for reply to address the identified deficiencies. In accord with the post-AIA inventor oath/declaration rules, the notice also indicates that there are missing oaths/declarations, but states that there is no set period for submission of these documents. Rather, an applicant need only ensure that any oaths/declarations or substitute statements are submitted before the application proceeds to issue.

Upon receipt of such a notice, an applicant begins the process of remedying the identified deficiencies. This might include ordering formal drawings prepared by a draftsperson, drafting a preliminary amendment, etc. In addition, an applicant might receive an executed combined declaration and assignment from an inventor. Having received such a document, an applicant might proceed to record the combined declaration and assignment promptly, even before other parts of a response to a Notice to File Corrected Application Papers or Notice to File Missing Parts are ready for submission (e.g., before formal drawings are received from a draftsperson or before claim amendments are finalized, etc.).

Upon recordation of a combined declaration and assignment, the USPTO automatically places a copy of the document in the Image File Wrapper of the application. While this action is performed automatically by the USPTO, the insertion of the document into the Image File Wrapper is interpreted elsewhere at the USPTO as an attempted response to the pending Notice to File Corrected Application Papers or Notice to File Missing Parts. Because the combined declaration and assignment does not address the other identified deficiencies of the application, a Notice of Incomplete Reply is issued, citing the applicant’s “reply” on the date the combined declaration and assignment was recorded and setting out a new period of reply to avoid abandonment.

This peculiarity is ultimately harmless, as an applicant can remedy whatever other deficiencies were originally noted in the Notice to File Corrected Application Papers or Notice to File Missing Parts in a response to the Notice of Incomplete Reply. Regardless though, no one wants to receive a Notice of Incomplete Reply. To avoid this kind of unexpected consequence (at least until the USPTO gets its left and right hands talking to one another), applicants should consider refraining from recording any combination declaration and assignment documents prior to submitting a response on the merits to a pending Notice to File Corrected Application Papers or Notice to File Missing Parts.

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Final Rules Released for Oath or Declaration Provisions - What You Need To Know

On August 14, 2012, the United States Patent Office (USPTO) issued final rules that will implement the America Invents Act (AIA) provisions relating to the inventor’s oath or declaration (discussed below as “declaration” for simplicity). These final rules drastically change many aspects of the prior rules relating to the content of declarations and the timing for filing declarations. Thus, for applications having a filing date on or after September 16, 2012, patent applicants can expect to see very different declarations provided for signature.

How Has the Required Content of the Declaration Changed?

Although an inventor’s declaration still must be executed (except in limited circumstances described below), the new rules reduce the required statements and result in a streamlined declaration. Many pieces of information previously contained in the declaration will be moved to an application data sheet (ADS), which is prepared by the patent attorney just prior to filing the patent application. For example, the ADS will be the Patent Office’s sole source of information for the listing of the inventors and any foreign and domestic priority claims.

The declaration must contain a statement that the application was made or was authorized to be made, by the person signing the declaration and that the inventor is believed to be the original inventor or an original joint inventor of an invention claimed in the patent application. For this reason, the person signing the declaration must still have reviewed the application and be aware of the duty of disclosure.

The citizenship of the inventors and the names of the inventors no longer need to be listed in the declaration text (if provided in an ADS). The inventor no longer needs to state in the declaration that the inventor is believed to be the “first” inventor, in light of the AIA changing the U.S. to a first to file system. Also removed from the requirements for the declaration are the statement of foreign priority claims and any statements relating to the inventor’s understanding of the application, the duty of disclosure, the potential impact of willful false statements on the application or issuing patent’s validity, and the belief by the inventor of the truthfulness of his or her statements made in the declaration.

Some patent owners may decide to combine the simplified statements required for declarations into an assignment document and require only one signature for each inventor, which is allowed under the new rules. The combined assignment and declaration can be recorded as a single document in the same manner as a traditional assignment.

Do I need a Newly Executed Declaration in a Continuing Application?

Traditionally, the original declaration from a parent application can be filed in a continuation, divisional, or continuation-in-part application that includes the aforementioned statements required under the final rules, provided the inventors are the same. However, a previous declaration from a parent application filed before the final rules go into effect (i.e., before September 16, 2012) will likely not include some of the required language. Thus, a continuation, divisional or continuation-in-part application filed after September 16, 2012 and claiming priority to an application filed before September 16, 2012 will likely require a newly executed declaration that contains the newly required language.

When is a Declaration Not Needed?

The final rules allow for a substitute statement to be filed in lieu of a declaration when an inventor is deceased, incapacitated, or refuses to execute a declaration, or cannot be reached after diligent effort. While petitions or other corresponding procedures existed in the previous rules, the final rules no longer require proof of facts to support the filing of a substitute statement. Instead, only an explanation of the circumstances, the name of the inventor at issue, and the person signing the substitute statement are required.

When Does a Declaration Need to Be Submitted?

Under the new procedures, a declaration no longer needs to be submitted prior to examination of a patent application, provided that an application data sheet is filed before examination that lists the name, residence, and mailing address of each inventor. A declaration need not be submitted until the patent application is in an allowable form, and prior to a deadline provided within a Notice of Allowability. If the application does not include a declaration in the initial filing, a $130 surcharge will be incurred, provided the initial filing includes the aforementioned application data sheet. However, a delay in filing an executed declaration in a U.S. national stage application after national stage entry could reduce the accrual of USPTO delay-based patent term adjustment.

How Have the Revised Declaration Rules Affected a Priority Claim?

Under the new procedures, a declaration containing a claim to foreign priority is no longer effective in establishing the foreign priority claim. Also, a domestic priority claim that is not in the application data sheet, but that is listed only in the written description of a patent application, will no longer be effective. Instead, a claim for either foreign or domestic priority must be provided in an application data sheet.

What to Do Now?

With the implementation of the new rules on September 16, 2012, patent applicants will notice a change in the documents they are requested to sign in connection with a patent application. The declarations should be streamlined and can be combined with the assignment to further simplify the signing by inventors. Nevertheless, it is important that the inventors review the patent application prior to signing the simplified documents and it is important that each inventor be reminded of the duty to submit to the Patent Office information relevant to patentability of the invention.

For further discussion of the content of this bulletin, please contact us .

Procuring U.S. Patents without a Signed Assignment of Patent Rights

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights. Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed. This article summarizes the requirements for filing and prosecuting a U.S. patent application filed post-America Invents Act (AIA) without a patent assignment and identifies pitfalls when establishing ownership of patent rights for patent prosecution. Inventors being unavailable may also complicate obtaining the declarations required for U.S. patent prosecution, but solutions are available as we previously discussed here .

Need for an Assignment

For a patent to issue to an assignee, the United States Patent and Trademark Office (the “USPTO”) must be made formally aware of the assignment so that the assignee is recognized as the patent applicant. Filing an Application Data Sheet (ADS) for a patent application identifying the assignee as the applicant provides informal notice to the USPTO. MPEP § 301 discusses ownership/assignability of patents and applications, including formal assignment recordation at the USPTO. Recording an assignment may be necessary to permit the assignee to “take action” in the patent application during prosecution and for the patent to issue in the name of the assignee. 37 CFR 1.46 ; MPEP §§ 301 , 302 , 605 . In other words, assignees may face obstacles prosecuting a patent without an executed assignment. The assignment(s) must transfer the entirety of patent rights from each of the inventors to the assignee, e.g., corporation, partnership, university, government entity, etc. There can be multiple assignees if different inventors assign their rights to different assignees, a situation that results in two or more partial assignees that must each be identified to the USPTO as an applicant. MPEP § 301 .

As only one patent assignment is required per inventor per patent application, subsequent applications claiming priority may often rely on an earlier assignment (depending on the assignment’s particular language). If new subject matter is introduced in the application being filed, such as in a continuation-in-part application, another assignment may be required.

Persons who may file a Patent Application without an Assignment

Fortunately, applicants may procure a patent even if an inventor is not available to sign an assignment before application filing or during prosecution before payment of the issue fee.

A person to whom the inventor is under the obligation to assign the invention may file a patent application and be identified as the applicant. An assignment can then be subsequently executed and the USPTO notified as discussed above. Alternatively, other documentary evidence of ownership, such as an employment agreement, invention disclosure form, or other documentation, can be recorded with the USPTO in lieu of a signed assignment document. 37 CFR 1.46 . Employment agreements may contain language stating that the inventor assigns all rights, title, and interests in any invention developed while employed by the employer. In some instances, the employment agreement may affirmatively state that the employee is under an obligation to assign the invention to the employer. An invention disclosure form may contain language stating that the inventor’s signature on the form acknowledges the inventor’s assignment of and/or obligation to assign any rights, title, and interest in the invention disclosure to the employer. If the invention disclosure form includes the inventor’s signature, this may be sufficient evidence that the employer is an obligated assignee. 37 C.F.R. 1.46(b)(1) . It is important to examine any documentary evidence of ownership before recordation to identify any information (e.g., industry trend language, discussion of prior art, personal information of an employee, etc.) that may require redaction before recordation and/or may make public recording of the documentary evidence an undesirable option for the applicant.

Also, a person who shows sufficient proprietary interest in the matter may file a patent application and be identified as the applicant upon showing that such an action is appropriate, with the resulting patent being issuable in the applicant’s name. 37 CFR 1.46 . If filing a national stage application, the applicant must have been identified in the international stage of the international application or as the applicant in the publication of the international registration.

Showing Sufficient Proprietary Interest or Obligation to Assign

As provided in 37 CFR 1.46(b)(2) , “[i]f the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.” Additionally, as stated in MPEP § 409.05 , “[t]he ability for a person who otherwise shows sufficient proprietary interest in the matter to make an application for patent is not limited to situations in which all of the inventors refuse to execute the application, or cannot be found or reached after diligent effort.”

Showing sufficient proprietary interest requires “proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.” 37 CFR 1.46(a) ; 37 CFR 1.424 . Showing sufficient proprietary interest is discussed in MPEP § 409.05 and may be established in various ways depending on the circumstances. MPEP § 409.05 states that

A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.46 applicant. The facts in support of any conclusion that a court would award title to the 37 CFR 1.46 applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same. The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved. A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to demonstrate a proprietary interest should be made of record.

Remember that an applicant as a person who otherwise shows sufficient proprietary interest in the matter must submit the required petition, fee, and information prior to paying the issue fee as set forth in 37 CFR 1.46 .

Final Considerations

Patent applicants can gain control over patent prosecution and assert patent rights even without execution of a signed assignment by an inventor. Before doing so, however, applicants should coordinate with patent counsel regarding their particular circumstances and should consult current USPTO rules.

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October 27, 2020

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E-Signing Patent Documents Might Sometimes Be the Wrong Approach

By Joseph Hetz and Hervey Su

Prior to the Covid-19 pandemic, the US Patent and Trademark Office’s electronic signature rules required inventors to type their signature between two slashes or use a graphically inserted replica of a previously created wet—or ink—signature.

During the pandemic’s early days, the USPTO revised its e-signature guidance to allow e-signatures created with a commercial platform, such as DocuSign.

With many inventors working from home, the platform became a popular tool for obtaining inventor signatures on declarations and assignments.

Although many employees are returning to the office, the work-from-home-era practice of using DocuSign is here to stay, especially since people are accustomed to using the tool in various aspects of their lives. However, there are three misconceptions about using DocuSign for patent documents.

Myth: The USPTO Accepts ‘DocuSign Signatures’

One misconception is that, because of its revised guidance, the USPTO now accepts “DocuSign signatures,” as if a “DocuSign signature” was monolithic. But there are many ways DocuSign can be used to create an e-signature, and only some comply with the guidance.

For example, the signor often chooses a signature to adopt—usually having a script font that has the appearance of a written signature. Such a signature wouldn’t comply with USPTO guidance because it is missing slashes before and after the signature.

Fortunately, DocuSign allows the slashes to be prepopulated, eliminating the risk of forgetting to include them. Also, the USPTO allows “hand-drawn” signatures—e.g., using a mouse or a fingertip—that don’t require slashes, and DocuSign can be configured to force the inventor to create such a signature.

Myth: E-Signature Rules Apply to Assignments

Since declarations and assignments are often presented together to an inventor, USPTO rules on e-signatures often are assumed to apply to both declarations and assignments.

Unlike signatures on declarations, which are governed by USPTO rules, signatures on assignments are only governed by federal and state law, such as the E-signatures in Global and National Commerce Act and the Uniform Electronic Transactions Act .

Still, since the documents are typically signed together, it’s good practice to configure DocuSign to use the same signature rules on both the declaration and the assignment.

Also, since evidence of the signor’s intent is typically examined when determining the validity of an e-signed document, it’s good practice to include language in the assignment that the assignor agrees to using e-signatures.

Myth: Wet Signatures Needed for Foreign Filings

Another misconception is that foreign countries don’t accept e-signatures. But Canada’s Intellectual Property Office honors a variety of e-signatures, such as /s/ signatures and DocuSign.

Second, the US declaration and assignment don’t need to be submitted in many foreign countries—such as Australia, Canada, and Germany—so it shouldn’t matter if those are e-signed.

E-signatures aren’t accepted in China, Japan, and Mexico, however, and DocuSign contracts may not meet the strict requirements in Brazil for e-signatures.

Inventor-signed formal papers don’t need to be filed when nationalizing into those countries from a Patent Cooperation Treaty application, so it usually shouldn’t matter if the US declaration and assignment are e-signed.

However, if an error in the inventor or applicant information needs to be corrected during the national stage, it might need a copy of the US assignment and, if e-signed, it may be rejected.

The rules aren’t clear for some countries. India requires inventor-signed documents, for example, and its Information Technology Act allows for e-signatures. Nevertheless, the Indian Patent Office has been known to reject e-signatures.

But there’s a workaround. In nationalizing into India from a PCT application, an e-signed declaration under PCT Rule 4 would be accepted, so it’s good practice to include one as part of the DocuSign package if and inventor may file in India.

A wet signature is the gold standard and safest option, especially if foreign filing is contemplated. But if using DocuSign, it’s important to configure its setting to only accept a USPTO-approved signature and add language in the assignment that the assignor agrees to the use of e-signatures.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

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Author Information

Joseph F. Hetz is a partner at Crowell & Moring and co-chair of the firm’s patent prosecution practice group.

Hefeng (Hervey) Su is an associate at Crowell & Moring and splits time between the patent and ITC litigation and patent prosecution groups.

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April 23, 2020

Signing while Social Distancing, Part 2: Assignments

Problems with assignments are likely to occur many years in the future when the assignor may be unavailable or uncooperative. Therefore, you (the person advising on or determining the process for obtaining signatures) should determine the signature method most likely to have evidentiary value and recognition across your jurisdictions of interest while falling below a threshold of inconvenience to the signer. For example, an inventor clicking a link in an email and typing their name into electronic signature software is a very low burden. On the other hand, an inventor may balk at participating in a notarization videoconference that requires answering personal questions that are as invasive as those asked when accessing their annual credit report.

Handwritten, in-person notarization may receive the widest international recognition, but is not feasible now.
Remote notarization comes in a close second.
Electronic signature software (for example, DocuSign) is the most convenient for the signer and offers greater authenticity guarantees than simply modifying a PDF. Use this when international recognition is less critical.
For any type of signature, recording a video of the signature process is powerful evidence of the authenticity of the signature.
If your normal practice is notarization, consider temporary usage of electronic signature software; then, when in-person notarization is once again feasible, obtain notarized confirmatory assignments.

Assignments

Understanding the considerations for signing inventor declarations (discussed here ) is difficult enough, and declarations only need to satisfy one entity: the USPTO. Meanwhile, patent assignments may need to have worldwide effect. If you are familiar with the law of one of the 153 Patent Cooperation Treaty (PCT) contracting states, that leaves only 152 jurisdictions for you to consult competent counsel in. And don’t forget the countries (like Taiwan and Argentina) that are not PCT contracting states. Further, in the U.S., there is not a single body of contract law governing patent assignments, so you’ll want to consider all 50 states (and perhaps the District of Columbia). We haven’t vetted the below thoughts with every country in the world, but general principles should be applicable to the vast majority.

The goals to be satisfied by an assignment signature are:

Create a document that can be recorded with the USPTO to demonstrate a clear chain of title to the patent holder
Create evidence for purposes of U.S. enforcement that the assignment was an authentic act by the assignor
Demonstrate chain of title to non-U.S. governments and patent offices — including, importantly, the right of an assignee to claim priority to an earlier application
Create evidence for purposes of non-U.S. enforcement that the assignment was an authentic act by the assignor
Bind the assignor to promises of further cooperation laid out in the assignment

Goal #1 will be met by any of the signature methods described below, so will only be mentioned once more. Goal #2 is satisfied to greater or lesser extents by the signature methods, as described below. Goals #3 and #4 may not be relevant to an applicant/patentee interested in only U.S. protection, in which case the related considerations can be ignored.

Achievement of goal #5 should be closely related to goal #2, with the caveat that contractual consideration may be a more important factor for goal #5. Consideration for an inventor-assignor may include payment of a patent-related bonus; continued employment may also serve as consideration.

Goals #2–4 may have less importance if the assignment is primarily to confirm the prior operation of law or agreement. This is generally most relevant for an inventor assigning to a company. For example, an employment agreement with “hereby assign” language may have already operated to assign the invention from the inventor to the company. For additional information on employment agreement language, see this blog post . In another example, national law (such as the Employee Inventions Act in Germany) may have operated to assign the rights in an invention to the employer from the employee. In such cases, you may want to choose a signature method that is less demanding of the signer’s time and privacy.

Signature Types

Signature methods may be divided into three groups:

handwritten
live in-person
live remote
later attestation
handwritten with in-person notary
electronic with remote notary

Goal #2 – U.S. Enforcement

For U.S. enforcement of patent rights, a notarized signature has statutory benefits. Specifically, 35 U.S.C. § 261 states that a notarization “shall be prima facie evidence of the execution of an assignment, grant or conveyance of a patent or application for patent.” In other words, a notarized signature shifts the burden to the challenger to prove that the signature is not authentic.

If a signature is witnessed by one or more (though usually it is one or two) other people, those people can be called at trial to offer evidence of the signature’s authenticity. There is, however, no statutory benefit afforded to witnessed signatures. And ten years from now in litigation (TYFNIL), a witness may not be available, or their memory of witnessing a particular signature may not be very clear.

A bare signature offers none of the evidentiary benefits of notarization or witnessing. However, a handwritten signature may be authenticated by an expert. Meanwhile, authenticating an electronic signature may require documentary evidence of the signature process for that particular signature. This may obligate the assignee to retain evidence of the correspondence related to the signature. As an improvement, signature software (for example, DocuSign) adds authenticity and anti-tampering features to an electronic signature and may retain records related to the authenticity of the signature.

For any of these three types of signatures, video evidence of the signature being applied may prove very useful TYNFIL. Specifically, the video should show the person applying the signature, some evidence of their identity (such as a government issued identification), and the act of applying the signature. While a notarization provides prima facie evidence of execution, the video recording would provide actual evidence that would be difficult to dispute. Similarly, if a recording were made of the witness observing the signature — either in person or over a video link — the recording may eliminate the need to find the witness or refresh their recollection. While less likely to be used in the case of a bare signature, the signer or a third party could make a video recording of the signor applying their signature to the document.

Goals #3 and #4 – Non-U.S. Considerations

Many countries have electronic signature laws and they are not all consistent. It would be difficult to stay up to date with the electronic signature laws in 150 or more countries. If you have interest in patent protection in any particular countries or regions, you should consult with competent counsel in those jurisdictions.

Generally, you would expect a notarized signature to carry more weight in a foreign country than would a signature not legalized in any way. It stands to reason that a handwritten signature with a physical notary stamp would be the most familiar to countries around the world, and the least likely to run afoul of jurisdiction-specific electronic signature requirements. However, the realities of quarantine may require taking the risk of non-U.S. disapproval of an electronic notarization.

It is not clear that the presence of witnesses has any impact on formal requirements of non-U.S. governments. For both witnessed and bare signatures, handwritten signatures are most likely to be familiar to countries around the world. However, electronic signatures collected with the assistance of electronic signature software may have sufficient authenticity factors to satisfy the requirements in some countries. In fact, software-assisted signatures may even qualify as “advanced” signatures in Europe, in contrast to “simple” electronic signatures that have no authenticity features.

Notarization

Recognition.

For patents and patent applications, does the location of notarization matter? In other words, if you are trying to enforce a patent in the District Court of Delaware, does it matter whether an assignment was notarized in New Jersey? What if the notarization process doesn’t satisfy Delaware notarial rules? What if the New Jersey notary would not qualify as a notary in Delaware?

These are questions that have arisen historically. At the present time, it appears that a notarization properly performed according to the rules of one state will generally be recognized in other states. See Enduring Benefits of Interstate Recognition of Notarial Act Laws , a statement from the National Notary Association. According to this 2017 statement, the one exception appears to be Iowa, which does not recognize remote notarizations done by Iowa notaries or notaries of other states. A remote notarization is when the notary is located in a different location from the signer and they are only virtually connected, such as by a videoconference. It appears that Iowa has passed legislation effective July 1, 2020 to allow remote notarization and temporarily waived the prohibition in advance of that effective date.

In short, remote notarization appears to be nearly universally recognized throughout the U.S. The governors of a number of states, including Michigan and Missouri, have signed executive orders expanding the use of online notarizations, making it easier for notaries to conduct remote notarizations. In Michigan, the Secretary of State has approved certain vendors for remote notarization, including NotaryCam and Notarize .

For approximately $25, a remote notarization vendor verifies the identity of a signer, connects the signer with a notary via videoconference, allows the signer to apply a signature and the notary to apply an electronic notary stamp, records the videoconference, and distributes the signed documents. The expertise of a vendor may be preferable to law firms or companies training existing notaries who may only be familiar with handwritten notarial procedures.

Because the remove notarization vendor does not personally know the signer, the verification process may seem intrusive to the signer. Using the training materials of one vendor as an example, the signer must take pictures of the front and back of a government-issued ID and provide the last 4 digits of their social security number. Then, the vendor generates 5 challenge questions to be answered in 2 minutes. These questions are similar to what you might need to answer in order to pull your annual credit report, so they are very personal.

While it is hard to know whether all jurisdictions around the world will be comfortable with a remote notarization, the practice appears to be satisfactory throughout the U.S. Further, the video recording provides excellent evidence of the authenticity of the signature for U.S. enforcement.

Witnesses may be able to provide evidence that a signature is authentic, though it is not clear that they will solve any concerns of non-U.S. patent offices regarding the formalities of the signature. In any case, witnesses should not hurt the effectiveness of the assignment. As a note, try to avoid the witness being related to the signer as a family member, significant other, etc.

When social distancing prevents in-person witnessing, a videoconference will allow one or more witnesses to observe the signer applying their signature. If the signature is handwritten, a webcam could be directed toward the paper. If the signature is applied by editing a PDF, screen-sharing functionality of the videoconference can allow the signature to be witnessed.

A video recording of the signature process (of course, with the informed consent of all the parties being recorded) will provide excellent evidence of the authenticity of the signature. The identity of the signer should be verified within the recording, such as by directing a webcam at the signer’s face, having the signer state their name, and perhaps display a government-issued identification. In fact, a video recording of a signature may be more probative for purposes of U.S. enforcement than a handwritten notarization not captured by video.

One additional approach to witnessing is offered by signature software. Using DocuSign as an example, a document is sent to the signer for signature with an indication that one or more witnesses are required. The signer applies their signature and then specifies the name, email address, and a custom message for each witness. DocuSign then sends the signed document to the specified witness(es) for them to apply their signature. Because the witnesses in this situation did not physically watch the signature occur, this might be referred to as later attestation. This may allow the witnesses to be called to give evidence of the signature’s authenticity TYFNIL. Since the signature software already enforces that the signature is entered by someone having control of the signer’s email address, it is not clear how witnesses receiving attestation requests from that email address provides much practical additional authenticity.

Electronic Signatures

S-signatures.

The USPTO rules for S-signatures (slash signatures) are irrelevant for assignment signatures, though using slashes do not hurt. In fact, if you are using electronic signatures for the inventor declaration (see the prior declaration signature blog post for more details), consistency and simplicity may suggest that you instruct that the inventor use an S‑signature on both the declaration and the assignment.

Because contract law in the U.S. differs from state to state, you may question what requirements an electronic signature would have to meet to be enforceable in all 50 states. As it turns out, the requirements have become fairly uniform due to the federal passage of the Electronic Signatures in Global and National Commerce Act (ESIGN) and the adoption by most states of the Uniform Electronic Transactions Act (UETA). For more information, see this 2017 law review article from Emory Law School.

The UETA defines an electronic signature as “an electronic sound, symbol, or process attached to or logically associated with a record and executed or adopted by a person with the intent to sign the record.” Therefore, there appears to be no problem — with respect to U.S. recognition — if the signer does any of the following:

pastes an image of a handwritten ink signature into a PDF (either manually or via signature software)
freehand draws — using a mouse, trackpad, stylus, touchscreen, etc. — a signature directly onto a PDF or pasting such a freehand drawing into the PDF (either manually or via signature software)
inserts text of a signature into the PDF (either manually or via signature software)
types text of a signature directly onto the PDF

For international recognition and for U.S. evidentiary purposes, there may be a benefit to a handwritten signature over a simple electronic signature not applied using signature software. This is because a handwritten signature should be more difficult to forge than typed characters rendered on a PDF form, and is susceptible to later analysis by a handwriting expert.

Signature Software

Signature software — such as DocuSign from DocuSign, Inc. or Sign (formerly, EchoSign) from Adobe Inc. — has substantially more authenticity value than simply editing a PDF, generally recording indicia of the signer’s activity, including specific times of signing and email and IP addresses. Further, the signature software may generate a cryptographic signature to allow verification that the document has not been modified post signature. Some European law recognizes simple and advanced signatures, and these features of signature software may satisfy the requirements of an advanced signature.

In a typical signature software workflow, the administrator responsible for obtaining signatures uploads the unsigned assignment PDF to the signature software, designates the location of the required signatures and dates within the PDF, and specifies the signer’s email address. The signature software then sends a link to the signer’s email address. The patent application should be sent to the signer either through the signature software or over a side channel (such as in a direct email), especially if the application has not yet been filed.

The signer clicks the link, reviews the assignment, and applies a signature. The signature software automatically fills in the date field and then informs the administrator of execution of the assignment and provides a copy of, or a link to, an executed PDF. The signature software may implement automated reminders to signers who have not yet signed a document after a set number of days. Meanwhile, the signature software logs the email address of the signer, when the assignment was opened, and when the assignment was signed. This information may be hashed and stamped on the executed PDF or stored elsewhere to detect tampering. The signature software process ensures that the signature was applied by the signer or, at the very least, by someone having control of the signer’s email address.

Handwritten signature

The signer can follow the traditional handwritten signature process of printing the PDF file to paper, hand-signing the paper with permanent dark ink (blue or black is best), scanning the paper back in, and sending back an email with the scanned document. Then, the signer should send the ink-signed original paper back to the in-house counsel or outside counsel.

If the signer is working from home and doesn’t have a printer available, handwritten signatures are not practical (though mailing paper by courier remains a possibility). Most signers will have a smartphone or a digital camera, which can create a scanned image. Unfortunately, the scan may be skewed, blurry, and/or discolored. For example, the yellow color from warm home lighting may cause the entire document to have an off-white background. These scanning issues can result in readability issues, especially after USPTO processing. We have seen the USPTO’s assignment branch refuse recordation of an assignment due to the scan quality — one of the few ways to fail to achieve goal #1. Hopefully, the assignment preparer has software that can perform image processing to improve poor scans. The author has used ABBYY FineScanner Pro for this purpose, but does not endorse any particular product.

If possible, the signer should use a scanning app on their phone. On an iPhone, the built-in Notes app works just fine, and can apply a black-and-white filter to remove a yellow tinge or a shadow. See here for brief instructions . If the signer doesn’t mind installing a useful app, the Wirecutter site recommends Adobe Scan , which is available for free on both the Android and iOS operating systems.

Assignee signature

For all company to company assignments, the assignor and assignee should both sign. This is especially important if protection outside the U.S. (and especially Europe) is of interest. Regarding inventor to company assignments for inventions you are confident will be restricted to the U.S., obtaining the company’s signature is not a requirement.

Ideally, the signature by the assignee would be performed in the same manner as that of the assignor. However, as a practical matter, it is more likely for the signature of the assignor to be challenged. Therefore, if the person authorized to sign on behalf of the assignee is busy, it may be possible to use a simple electronic signature for the assignee even if the signature for the assignor is notarized.

Inventor to Company Assignments

If an inventor to company assignment is prepared prior to an application being filed, the assignment should list all the inventors. See 37 CFR 1.63: “if an assignment of a patent application… is executed… before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention….”

If an assignment is prepared after the application has been filed, a separate assignment can be prepared for each inventor. This may make tracking signatures simpler: each document for signature will correspond one-to-one with a returned executed document.

Two Bites at the Apple

For companies that usually require witnesses or notarization on assignment documents, online notarization or remote witnessing with video recording are options, as described above. Another option is to temporarily use electronic signature software. Then, when in-person notarization or witnessing is once again feasible, obtain confirmatory assignments. For inventor to company assignments, delaying an assignment creates a substantial risk of the inventor being unavailable to sign the assignment when the company is ready.

As a reminder, an assignment should be recorded with the USPTO within 3 months of execution to be valid against a bona fide purchaser. 35 USC § 261. Therefore, to avoid exceeding that 3-month timeframe, record the first assignment with the USPTO. Once the later (notarized or witnessed) assignment is obtained, it is not necessary to record it as well. However, recording the later assignment may provide a useful backup in the event of a loss of the original.

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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.

The following USPTO patent forms may be installed on your computer. Please click on the appropriate declaration or assignment form below to see instructions on how to use the form and how to download/save it to your computer. You may then open and use the forms directly from your computer.

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
Single Assignee
Multiple Assignees

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Corrective assignment uspto: Fill out & sign online
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How to Prepare a USPTO Application Data Sheet and Inventor Declaration
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USPTO PTO/SB/08a 2020

COMMENTS

602-Oaths and Declarations
An assignment may also serve as an oath or declaration required by 37 CFR 1.63 if the assignment: (1) includes the information and statements required under 37 CFR 1.63(a) and (b); and (2) a copy of the assignment is recorded as provided for in 37 CFR part 3.
Forms for patent applications
For general assistance in completing the patent forms below or to request paper copies of the forms, contact the USPTO Contact Center Division at 1-800-786-9199 (1-800-PTO-9199) or 571-272-1000, and select option 2. To report a problem with a fillable patent form, please email [email protected].
PDF AIA Inventor's Oath or Declaration Quick Reference Guide
2. Submit the assignment-statement for recording in EPAS on the same day the application is filed to avoid a surcharge for delayed submission of the inventor's oath or declaration. Check the box in EPAS to notify the Office that the assignment-statement is being used as the inventor's oath or declaration. The Office will then place a copy ...
Assignment Center
Assignment Center is the USPTO's online system for filing and managing patent and trademark assignments. Learn how to use it with our tutorial videos and FAQs.
Assignment Center
<link rel="stylesheet" href="styles.2287ebe494445f85.css">
37 CFR § 1.63
(a) The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided for in § 1.64.An oath or declaration under this section must: (1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;
USPTO Issues Final Rules: Inventor's Oath or Declaration
If so, the assignment must be recorded with the USPTO. Under Rule 1.64, in lieu of an oath or declaration, a substitute statement may be executed by the assignee (as the applicant) if the inventor is deceased, is under a legal incapacity, has refused to execute an oath or declaration, or cannot be located after diligent effort.
US Inventor Declarations & Assignments
Declarations (i) and (ii) can be signed off by the acting attorney; declaration (iv) however must be signed by each inventor. 2/ Make sure any employment agreements, particularly for research & development staff, clearly address the employee's obligation to assign any IP rights created, and include language which actively and presently ...
PDF ASSIGNMENT OF PATENT
ASSIGNMENT OF PATENT Hereafter referred to as said assignee is desirous of acquiring the entire right and interest in said patent/application. Now, therefore, I the owner by these presents do sell, assign and transfer unto said assignee the entire right title and interest in aforesaid
United States Patent and Trademark Office
United States Patent and Trademark Office. Select one. Enter assignment information in any field or combination of fields. The number assigned when a patent application is filed at USPTO. The person, group of persons, or organization that recieved ownership rights of the patent application or patent. The nature of the transfer of ownership of ...
301-Ownership/Assignability of Patents and Applications
A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee (s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261 . II. ASSIGNMENT. "Assignment," in general, is the act of transferring to another the ...
Filing an Assignment and Oath/Declaration for a Deceased Inventor
To satisfy the oath or declaration requirement, a Substitute Statement (USPTO form AIA/02) must be executed by someone authorized to do so. 37 C.F.R. 1.64 (a). Once you have all of the above elements, fulfilling the assignment requirements is as easy as uploading to the USPTO and recording the three separate assignments - living inventors ...
USPTO Left Hand Doesn't Know What the Right is Doing: An Unexpected
The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012. One such change is the ability to incorporate an inventor's required declaration statements into an assignment document, thereby reducing the number of documents that must be executed by an inventor in connection with filing a patent application.
Final Rules Released for Oath or Declaration Provisions
August 30, 2012. News. On August 14, 2012, the United States Patent Office (USPTO) issued final rules that will implement the America Invents Act (AIA) provisions relating to the inventor's oath or declaration (discussed below as "declaration" for simplicity). These final rules drastically change many aspects of the prior rules relating ...
Procuring U.S. Patents without a Signed Assignment of Patent Rights
An assignment can then be subsequently executed and the USPTO notified as discussed above. Alternatively, other documentary evidence of ownership, such as an employment agreement, invention disclosure form, or other documentation, can be recorded with the USPTO in lieu of a signed assignment document. 37 CFR 1.46. Employment agreements may ...
PDF Combined Declaration and Assignment (37 Cfr 1.63)
I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both. Address all correspondence and telephone calls to LEXYOUME IP MEISTER, PLLC., 5180 Parkstone Drive, Suite 175, Chantilly, Virginia 20151; Telephone: (703) 263-9390 ...
E-Signing Patent Documents Might Sometimes Be the Wrong Approach
Myth: The USPTO Accepts 'DocuSign Signatures'. One misconception is that, because of its revised guidance, the USPTO now accepts "DocuSign signatures," as if a "DocuSign signature" was monolithic. But there are many ways DocuSign can be used to create an e-signature, and only some comply with the guidance. For example, the signor ...
PDF Declaration (37 CFR 1.63) for Utility or Design Application Using an
PTO/AIA/01 (06-12) Approved for use through 05/31/2024. 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 displays a valid OMB control number.
Inventor Assignments Electronic Signatures
The USPTO rules for S-signatures (slash signatures) are irrelevant for assignment signatures, though using slashes do not hurt. In fact, if you are using electronic signatures for the inventor declaration (see the prior declaration signature blog post for more details), consistency and simplicity may suggest that you instruct that the inventor ...
Patent Forms
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 ...
US Patents Without a Signed Assignment of Patent Rights
Recording an assignment may be necessary to permit the assignee to "take action" in the patent application during prosecution and for the patent to issue in the name of the assignee. 37 CFR 1. ...
Patents Assignments: Change & search ownership
Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382.
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
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For pending or abandoned applications please consult USPTO staff. Enter the Data: Online Help Reel / Frame Number : / ... The database contains all recorded Patent Assignment information from August 1980 to August 28, 2024 . If you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571-272-3350. v.2.6 ...
PDF Signatures 37 CFR 1
Signatures 37 CFR 1.4(d) cont'd. A signaturemust be personally inserted/applied bythe individual identified as the signer, regardless of the manner of making the signature. Handwritten(personally signed) signatures are provided for in § 1.4(d)(1). An S-signature is a permitted type of signature between forward slash marks that is not ...

37 CFR § 1.63 - Inventor's oath or declaration.

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