C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 1—RULES OF PRACTICE IN PATENT CASES › Subpart B—National Processing Provisions

37 C.F.R. § 1.63

Inventor's oath or declaration

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(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.

(d)(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.

(e)(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.

[77 FR 48818, Aug. 14, 2012, as amended at 80 FR 17959, Apr. 2, 2015]
Notes of Decisions
Cited in 17 cases, 1985–2019 · leading case: Unitherm Food Sys., Inc. & Jennie-O Foods, Inc. v. Swift-Eckrich, Inc. (Doing Bus. as Conagra Refrigerated Foods), 375 F.3d 1341 (Fed. Cir. 2004).
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Unitherm Food Sys., Inc. & Jennie-O Foods, Inc. v. Swift-Eckrich, Inc. (Doing Bus. as Conagra Refrigerated Foods), 375 F.3d 1341 (Fed. Cir. 2004). · cites it 3× “” 37 C.F.R. § 1.63 ; see also 37 C.F.R. § 1.”
Reactive Metals & Alloys Corp. v. Esm, Inc., 769 F.2d 1578 (Fed. Cir. 1985). “The current rule respecting the content of the oath or declaration, 37 C.F.R. § 1.63 (1983), deletes that requirement.”
Glaxo Inc. & Glaxo Grp. Ltd. v. Novopharm Ltd., 52 F.3d 1043 (Fed. Cir. 1995). “The inventor(s) must submit an oath or declaration attesting that they have “reviewed and understand[] the contents of the specification” and believe “the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and…”
Seiko Epson Corp. & Epson Am., Inc. v. Nu-Kote Int'l, Inc. & Pelikan Produktions, A.G., Defendants-Cross, 190 F.3d 1360 (Fed. Cir. 1999). “69 applies only to the inventors’ initial oath or declaration filed pursuant to 37 C.F.R. § 1.63 , or a supplemental oath or declaration filed pursuant to 37 C.”
Front Row Tech., LLC v. NBA Media Ventures, LLC, 163 F. Supp. 3d 938 (D.N.M. 2016). “In particular, 37 C.F.R. § 1.63 requires that the person(s) signing the oath or declaration declare that he or she “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.”
Rowe Int'l Corp. v. Ecast, Inc., 586 F. Supp. 2d 924 (N.D. Ill. 2008). “Validity of the '834 patent for missing new oath Defendants next argue that the '834 patent is invalid because the '400 application lacked a new oath by the inventors, as is required for continuation-in-part applications under 37 C.F.R. § 1.63 . The inventors instead filed with…”
Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010). · cites it 2× “The examiner conducting the interference noted that the inventors’ declaration did not refer to the preliminary amendment, and therefore did not treat the preliminary amendment as part of the original disclosure under 37 C.F.R. § 1.63 . But see 37 C.F.R. § 1.”
Novo Nordisk A/s v. Caraco Pharm. Labs., Ltd., 688 F.3d 766 (Fed. Cir. 2012). · cites it 2× “37 C.F.R. § 1.63 . We have never limited district courts’ authority under this provi- sion to ordering only general correction of an incorrect list of inventors, rather than directing who should be added or removed as a co-inventor.”
Nilssen v. Osram Sylvania, Inc., 440 F. Supp. 2d 884 (N.D. Ill. 2006). “56(a),” as required by 37 C.F.R. 1.63(b)(3). In 1988, while prosecuting the ’795 Patent application, the patent examiner referred Nils-sen’s application to the Office of the Assistant Commissioner of Patents (also known as the “fraud squad”) for “further consideration of the…”
Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059 (Fed. Cir. 1998). “C § 115 (1994); 37 C.F.R. § 1.63 (1996). . We understand from the enumeration of elements that the term "technical fraud” was used by the court to mean common law fraud.”
Advanced Video Tech., LLC v. HTC Corp., 103 F. Supp. 3d 409 (S.D.N.Y. 2015). “37 C.F.R. § 1.63 (a). In its initial submission to the Patent Office, AVC submitted unsigned inventor oaths for all three inventors.”
PerSeptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315 (Fed. Cir. 2000). “The party or parties executing an oath or declaration under 37 C.F.R. 1.63 are presumed to be the inventors.”
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— 37 C.F.R. § 1.63(b)(3) — 1 case
Nilssen v. Osram Sylvania, Inc., 440 F. Supp. 2d 884 (N.D. Ill. 2006). “56(a),” as required by 37 C.F.R. 1.63(b)(3). In 1988, while prosecuting the ’795 Patent application, the patent examiner referred Nils-sen’s application to the Office of the Assistant Commissioner of Patents (also known as the “fraud squad”) for “further consideration of the…”
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