37 CFR 1.497 — Inventor’s oath or declaration under 35 U.S.C. 371(c)(4)
Statute text
Copy text37 CFR · MPEP Appendix R (Revision 01.2024)
37 CFR 1.497 — Inventor’s oath or declaration under 35 U.S.C. 371(c)(4).
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 * ]
(a) When an applicant of an international application desires to enter the national stage under 35 U.S.C. 371 pursuant to § 1.495 , and a declaration in compliance with § 1.63 has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26ter.1 , the applicant must file the inventor’s oath or declaration. 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 in accordance with the conditions and requirements of § 1.63 , except as provided for in § 1.64 .
(b) An oath or declaration under § 1.63 will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the requirements of §§ 1.63(a), (c) and (g) . A substitute statement under § 1.64 will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the requirements of §§ 1.64(b)(1), (c) and (e) and identifies the person executing the substitute statement. If a newly executed inventor’s oath or declaration under § 1.63 or substitute statement under § 1.64 is not required pursuant to § 1.63(d) , submission of the copy of the previously executed oath, declaration, or substitute statement under § 1.63(d)(1) is required to comply with 35 U.S.C. 371(c)(4) .
(c) If an oath or declaration under § 1.63 , or substitute statement under § 1.64 , meeting the requirements of § 1.497(b) does not also meet the requirements of § 1.63 or § 1.64 , an oath, declaration, substitute statement, or application data sheet in accordance with § 1.76 to comply with § 1.63 or § 1.64 will be required.
[Added 52 FR 20052, May 28, 1987, effective July 1, 1987; paras. (a) and (b) revised and para. (c) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (b)(2) revised and paras. (d) and (e) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a), (c), and (d) revised and paras. (f) and (g) added, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2001; para. (a)(1) corrected, 66 FR 28053, May 22, 2001, effective Mar. 22, 2001; paras. (a), (c), (d), and (f) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (c) corrected, 67 FR 6075, Feb. 8, 2002; para. (f)(1), revised 72 FR 51559, Sept. 10, 2007, effective Sept. 10, 2007; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[ * The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.497 (pre-AIA) for the rule otherwise in effect.]
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Prior version
1.497 (pre-AIA) Oath or declaration under 35 U.S.C. 371(c)(4).
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 * ]
(1) Is executed in accordance with either §§ 1.66 or 1.68 ;
(2) Identifies the specification to which it is directed;
(3) Identifies each inventor and the country of citizenship of each inventor; and
(4) States that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.
(1) The oath or declaration must be made by all of the actual inventors except as provided for in§§ 1.42 , 1.43 or 1.47 .
(2) If the person making the oath or declaration or any supplemental oath or declaration is not the inventor (§§ 1.42 , 1.43 , or § 1.47 ), the oath or declaration shall state the relationship of the person to the inventor, and, upon information and belief, the facts which the inventor would have been required to state. If the person signing the oath or declaration is the legal representative of a deceased inventor, the oath or declaration shall also state that the person is a legal representative and the citizenship, residence and mailing address of the legal representative.
(c) Subject to paragraph (f) of this section, if the oath or declaration meets the requirements of paragraphs (a) and (b) of this section, the oath or declaration will be accepted as complying with 35 U.S.C. 371(c)(4) and § 1.495(c) . However, if the oath or declaration does not also meet the requirements of § 1.63, a supplemental oath or declaration in compliance with § 1.63 or an application data sheet will be required in accordance with § 1.67 .
(1) A statement from each person being added as an inventor and from each person being deleted as an inventor that any error in inventorship in the international application occurred without deceptive intention on his or her part;
(2) The processing fee set forth in § 1.17(i) ; and
(3) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter); and
(4) Any new oath or declaration required by paragraph (f) of this section.
(e) The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.
(1) There was a change in the international filing date pursuant to PCT Rule 20.5(c) after the declaration was executed; or
(2) A change in the inventive entity was effected under PCT Rule 92bis after the declaration was executed and no declaration which sets forth and is executed by the inventive entity as so changed has been filed in the application.
(g) If a priority claim has been corrected or added pursuant to PCT Rule 26bis during the international stage after the declaration of inventorship was executed in the international application under PCT Rule 4.17(iv) , applicant will be required to submit either a new oath or declaration or an application data sheet as set forth in § 1.76 correctly identifying the application upon which priority is claimed.
[Added 52 FR 20052, May 28, 1987, effective July 1, 1987; paras. (a) and (b) revised and para. (c) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (b)(2) revised and paras. (d) and (e) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a), (c), and (d) revised and paras. (f) and (g) added, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2001; para. (a)(1) corrected, 66 FR 28053, May 22, 2001, effective Mar. 22, 2001; paras. (a), (c), (d), and (f) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (c) corrected, 67 FR 6075, Feb. 8, 2002; para. (f)(1), revised 72 FR 51559, Sept. 10, 2007, effective Sept. 10, 2007]
[ * See § 1.497 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
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