US Law Reform: Inventor Signature Requirements

Date: 2012-02-16
Authors: Tracey Hendy & Sarah Hennebry

In this next instalment in our series on US patent law reform, we look at the changes which bring greater ease and flexibility into the requirement for inventor signature(s).

Current requirements

Under current US Patent law, when filing a patent application (or entering the national phase via a PCT application), the inventor must provide a statement that he/she believes him/herself to be the original and first inventor. The inventor must also make a statement as to his/her citizenship. These statements are currently required to be made in the form of a signed oath or declaration.

Changes

Under the new law, the required statements may be included in an assignment document (thus eliminating the need for separate signatures) and the inventor will no longer be required to state his/her citizenship.

Perhaps the most practical change to the oath/declaration requirements is the timing for such a document to be executed.

Under the current law, the executed inventor oath/declaration must be filed within a deadline set by the US Patent Office soon after filing. Problems in meeting this deadline can be encountered when an inventor cannot be located or refuses to sign. The lack of signature can be remedied by demonstrating that the inventor either refuses to execute the application or cannot be contacted. But this requirement can cause difficulties and delays in meeting the deadline, leading to additional expense, not only for the additional paperwork but for extension of time fees. 

However, under the new provisions, the time for filing the executed oath/declaration is moved to the end of examination.

Changes to circumstances where an assignee may file a patent application

The new law also eases the need for an inventor signature in certain circumstances. The new law allows an assignee to file an application on behalf of the inventor, even without showing that the inventor refuses to execute the application or cannot be reached. In order to file an application on behalf of the inventor, the assignee must merely show a ‘sufficient proprietary interest in the matter’ and must also demonstrate that such an action is appropriate to preserve the rights of the parties. For this reason, it would be good practice for companies to ensure that employment agreements specifically state that employees agree to assign inventions to the company. Such agreements could potentially be used to show proprietary interest in the invention and ease the evidentiary burden in circumstances where an inventor signature cannot be obtained.

When do these new provisions apply?

The modified oath/declaration provisions will apply to any patent application filed on or after 16 September 2012. We will endeavour to update you as new practices and recommendations come to light.

What is the best practice?

Despite the new ability of an assignee to file a patent application in the United States, it appears that an executed inventor’s oath or declaration will still be a normal requirement for most applications.

The changes to the timing requirements also provide increased flexibility in circumstances where an inventor is temporarily unavailable. However, even once the new changes come into effect most applicants will be better off obtaining an executed inventor/oath declaration sooner rather than later.

This article was written by Tracey Hendy, Special Counsel, and Sarah Hennebry, Patent Scientist, Melbourne.