MPEP 602.05(b)
Oath or Declaration in Continuing Applications Filed Before September 16, 2012

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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602.05(b)    Oath or Declaration in Continuing Applications Filed Before September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 602.05(a) for information regarding oath or declaration in a continuing application filed on or after September 16, 2012.]

A continuation or divisional application filed before September 16, 2012 under 37 CFR 1.53(b) (other than a continuation-in-part (CIP)) may be filed with a copy of the oath or declaration from the prior nonprovisional application. See pre-AIA 37 CFR 1.63(d)(1)(iv).

A continuation or divisional application of a prior application accorded status under pre-AIA 37 CFR 1.47 will be accorded status under pre-AIA 37 CFR 1.47 if a copy of the decision according pre-AIA 37 CFR 1.47 status in the prior application is filed in the continuation or divisional application, unless an oath or declaration signed by all of the inventors is included upon filing the continuation or divisional application. An oath or declaration in an application accorded status under pre-AIA 37 CFR 1.47 is generally not signed by all of the inventors. Accordingly, if a copy of an oath or declaration of a prior application is submitted in a continuation or divisional application filed under 37 CFR 1.53(b) and the copy of the oath or declaration omits the signature of one or more inventors, the Office of Patent Application Processing (OPAP) should send a "Notice to File Missing Parts" requiring the signature of the nonsigning inventor, unless a copy of the decision according status under pre-AIA 37 CFR 1.47 is also included at the time of filing of the continuation or divisional application. If OPAP mails such a Notice, a copy of the decision according status under pre-AIA 37 CFR 1.47, together with a surcharge under 37 CFR 1.16(f) for its late filing, will be an acceptable reply to the Notice. Alternatively, applicant may submit an oath or declaration signed by the previously nonsigning inventor together with the surcharge set forth in 37 CFR 1.16(f) in reply to the Notice.

If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(b), the continuation or divisional application may either be filed (A) with a copy of an oath or declaration from a prior application and a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application (see pre-AIA 37 CFR 1.63(d) ), or (B) with a newly executed oath or declaration naming the correct inventive entity. If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(d) (continued prosecution design application), the request for filing the continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application (see 37 CFR 1.53(d)(4) ).

A continuation or divisional application filed under 37 CFR 1.53(b) of a prior application in which a petition (or request) under pre-AIA 37 CFR 1.48 to add an inventor was filed should be filed with a copy of the executed declaration naming the correct inventive entity from the prior application or a newly executed declaration naming the correct inventive entity. A copy of any decision under pre-AIA 37 CFR 1.48 from the prior application is not required to be filed in the continuation or divisional application.