MPEP 602.08(b)
Inventor Signature and Name

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

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602.08(b)    Inventor Signature and Name [R-07.2015]

I.    SIGNATURE REQUIREMENT - EXECUTION OF INVENTOR’S OATHS OR DECLARATIONS

United States patent applications which have not been prepared and executed in accordance with the requirements of Title 35 of the United States Code and Title 37 of the Code of Federal Regulations may be abandoned. Although the statute and the rules have been in existence for many years, the Office continues to receive a number of applications which have been improperly executed and/or filed. Since the improper execution and/or filing of patent applications can ultimately result in a loss of rights, it is appropriate to emphasize the importance of proper execution and filing.

There is no requirement that a signature be made in any particular manner. See MPEP § 402.03. It is permissible for an applicant to use a title of nobility or other title, such as "Dr.", in connection with his or her signature. The title will not appear in the printed patent. If applicant signs his or her name using non-English characters, then such a signature will be accepted. If the applicant is unable to write, his or her mark as affixed to the oath or declaration must be attested to by a witness. In the case of the oath, the notary’s signature to the jurat is sufficient to authenticate the mark. See MPEP § 602.

Applications filed through EFS-Web must also contain an oath or declaration personally signed by the inventor.

It is improper for an applicant to sign an oath or declaration which is not attached to or does not identify the application (e.g., a specification and drawings) to which it is directed.

Attached does not necessarily mean that all the papers must be literally fastened. It is sufficient that the specification, including the claims, and the oath or declaration are physically located together at the time of execution. Physical connection is not required. Copies of declarations are encouraged. See MPEP § 502.01, § 502.02, § 6.2, and § 602.05(a).

An oath or declaration under 37 CFR 1.63 by each actual inventor must be presented. Each inventor need not execute the same oath or declaration. For nonprovisional international design applications, see also 37 CFR 1.1021(d) and 1.1067. For applications filed before September 16, 2012, each oath or declaration executed by an inventor must contain a complete listing of all inventors so as to clearly indicate what each inventor believes to be the appropriate inventive entity. Where individual declarations are executed, they must be submitted as individual declarations rather than combined into one declaration (by combining the signature pages).

The provisions of 35 U.S.C. 363 for filing an international application under the Patent Cooperation Treaty (PCT) which designates the United States and thereby has the effect of a regularly filed United States national application, except as provided in pre-AIA 35 U.S.C. 102(e), are somewhat different than the provisions of 35 U.S.C. 111. The oath or declaration requirements for an international application before the Patent and Trademark Office are set forth in 35 U.S.C. 371(c)(4) and 37 CFR 1.497.

37 CFR 1.52(c) states that "[i]nterlineation, erasure, cancellation, or other alteration of the application papers may be made before or after the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers. A substitute specification (§ 1.125 ) may be required if the application papers do not comply with paragraphs (a) and (b) of this section."

An inventor is not required to re-execute a new inventor’s oath or declaration after alteration of the application papers provided that the changes are minor, for example, correction of typographical errors, grammatical problems, and clarifying sentences. If the changes would amount to the introduction of new matter had the change been made to a filed application, however, then the inventor should execute a new oath or declaration after reviewing the amended application. The rule permits alterations to the specification without the inventor re-executing an oath or declaration only where the statements in the executed declaration remain applicable. Additionally, an inventor must before executing the oath or declaration (i) review and understand the contents of the application; and (ii) be aware of his or her duty of disclosure. See 37 CFR 1.63(c). If the changes made to the specification before an application is filed result in substantial alterations to the application, then an inventor may not understand the contents of the application or be aware of his/her duty to disclose information relating to the substantial alteration.

The signing and execution by the applicant of oaths or declarations in certain continuation or divisional applications may be omitted. See MPEP § 201.06, § 201.07, and § 602.05(a). For the signature on a reply, see MPEP §§ 714.01(a), 714.01(c), and 714.01(d).

II.    SIGNATURE REQUIREMENT - EXECUTION OF OATH OR DECLARATION ON BEHALF OF INVENTOR

A.    For applications filed on or after September 16, 2012

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 under 37 CFR 1.64. Only inventors can execute an oath or declaration under 37 CFR 1.63. The applicant for patent may execute a substitute statement under 37 CFR 1.64 in lieu of an oath or declaration under the permitted circumstances. For information on the execution of a substitute statement, see MPEP § 604.

B.    For applications filed before September 16, 2012

The oath or declaration required by pre-AIA 35 U.S.C. 115 must be signed by all of the actual inventors, except under limited circumstances. 35 U.S.C. 116 provides that joint inventors can sign on behalf of an inventor who cannot be reached or refuses to join. See MPEP § 409.03(a). 35 U.S.C. 117 provides that the legal representative of a deceased or incapacitated inventor can sign on behalf of the inventor. If a legal representative executes an oath or declaration on behalf of a deceased inventor, the legal representative must state that the person is a legal representative and provide the citizenship, residence, and mailing address of the legal representative. See pre-AIA 37 CFR 1.64 and MPEP § 409.01(b). Pre-AIA 35 U.S.C. 118 provides that a party with proprietary interest in the invention claimed in an application can sign on behalf of the inventor, if the inventor cannot be reached or refuses to join in the filing of the application. See MPEP § 409.03(b) and § 409.03(f). The oath or declaration may not be signed by an attorney on behalf of the inventor, even if the attorney has been given a power of attorney to do so. Opinion of Hon. Edward Bates, 10 Op. Atty. Gen. 137 (1861). See also Staeger v. Commissioner of Patents and Trademarks, 189 USPQ 272 (D.D.C. 1976) and In re Striker, 182 USPQ 507 (PTO Solicitor 1973) (In each case, an oath or declaration signed by the attorney on behalf of the inventor was defective because the attorney did not have a proprietary interest in the invention.).

III.    INVENTOR’S NAME

For nonprovisional applications filed on or after September 16, 2012, 37 CFR 1.63 requires the identification of the inventor by his or her legal name. 37 CFR 1.63(a)(1) simplifies the requirement for the inventor’s name to be his or her legal name and no longer refers to a family or given name. The requirement for an inventor’s legal name is sufficient, given that individuals do not always have both a family name and a given name, or have varying understandings of what a "given" name requires.

For nonprovisional applications filed before September 16, 2012, pre-AIA 37 CFR 1.63(a)(2) requires that each inventor be identified by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial in the oath or declaration. For example, if the applicant's full name is "John Paul Doe," either "John P. Doe" or "J. Paul Doe" is acceptable. A situation may arise where an inventor’s full given name is a singular letter, or is a plurality of singular letters. For example, an inventor’s full given name may be "J. Doe" or "J.P. Doe," i.e., the "J" and the "P" are not initials. In such a situation, identifying the inventor by his or her family name and the singular letter(s) is acceptable, since that is the inventor’s full given name. In order to avoid an objection under 37 CFR 1.63(a)(2), applicant should point out in the oath or declaration that the singular lettering set forth is the inventor’s given name. A statement to this effect, accompanying the filing of the oath or declaration, will also be acceptable.

A.    Correction of Name

In an application where the name is typewritten with a middle name or initial, but the signature does not contain such middle name or initial, the typewritten version of the name will be used as the inventor’s name for the purposes of the application and any patent that may issue from the application. No objection should be made in this instance, since the inventor’s signature may differ from his or her legal name. Effective September 16, 2012, any request to have the name of the inventor or a joint inventor in a nonprovisional application corrected or updated, including correction of a typographical or transliteration error in the spelling of an inventor’s name, must be by way of a request under 37 CFR 1.48(f). A request under 37 CFR 1.48(f) must include (1) an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name, and (2) the processing fee set forth in 37 CFR 1.17(i). Requests under 37 CFR 1.48(f) filed on or after September 16, 2012, are treated by the Office of Patent Application Processing (OPAP). If the request complies with 37 CFR 1.48(f), OPAP will correct the Office records and send a corrected filing receipt.

If the error in the inventor’s name is not detected until after the payment of the issue fee, because amendments are not permitted after the payment of the issue fee, either (A) the application must be withdrawn from issue under 37 CFR 1.313(c)(2) and a request under 37 CFR 1.48(f) to correct the inventor’s name submitted with a request for continued examination (RCE) under 37 CFR 1.114, or (B) a certificate of correction, along with a petition under 37 CFR 1.182, must be filed after the patent issues requesting correction of inventor’s name.

Effective September 16, 2012, any request to correct or change inventorship, or correct or update the name of the inventor or a joint inventor, in a provisional application must be made pursuant to 37 CFR 1.48(d). 37 CFR 1.48(d) requires a request signed by a party set forth in 37 CFR 1.33(b), that identifies each inventor by his or her legal name, and the processing fee set forth in 37 CFR 1.17(q). OPAP treats requests under 37 CFR 1.48(d) and will correct the Office records and send a corrected filing receipt if the request complies with 37 CFR 1.48(d).

B.    Change of Name

Effective September 16, 2012, when an inventor’s name has been changed after the nonprovisional application has been filed and the inventor desires to change his or her name on the application, he or she must submit a request under 37 CFR 1.48(f), including an application data sheet in accordance with 37 CFR 1.76, that identifies each inventor by his or her legal name and the processing fee set forth in 37 CFR 1.17(i). The corrected application data sheet must identify the information being changed as required by 37 CFR 1.76(c)(2). The Office of Patent Application Processing (OPAP) treats requests under 37 CFR 1.48(f) and will correct the Office records and send a corrected filing receipt if the request complies with 37 CFR 1.48(f).Since amendments are not permitted after the payment of the issue fee (37 CFR 1.312 ), a request under 37 CFR 1.48(f) to change the name of the inventor cannot be granted if filed after the payment of the issue fee.

If the application is assigned, applicant should submit a corrected assignment document along with a cover sheet and the recording fee as set forth in 37 CFR 1.21(h) to the Assignment Division for a change in the assignment record.

C.    Order of Joint Inventor Names

For applications filed on or after September 16, 2012, the order of names of joint patentees in the heading of the patent is taken from the order in which the names appear in the application data sheet if submitted before or with the inventor’s oath or declaration. For applications filed before September 16, 2012, the order of names of joint patentees in the heading of the patent is taken from the order in which the typewritten names appear in the original oath or declaration. Care should therefore be exercised in selecting the preferred order of the typewritten names of the joint inventors, before filing, as requests for subsequent shifting of the names would entail changing numerous records in the Office.

Because the particular order in which the names appear is of no consequence insofar as the legal rights of the joint inventors are concerned, no changes will be made except when a request under 37 CFR 1.48(f) (filed on or after September 16, 2012) is granted. It is suggested that all typewritten and signed names appearing in the application papers should be in the same order as the typewritten names in the oath or declaration. The Office of Patent Application Processing (OPAP) treats requests under 37 CFR 1.48(f) and if the request is granted OPAP will change the order of the names in the Office computer records and send a corrected filing receipt. Because a change to the order of names of joint inventors is an amendment to the application and amendments are not permitted after the payment of the issue fee (37 CFR 1.312 ), a request under 37 CFR 1.48(f) to change the order of the names of joint inventors cannot be granted if filed after the payment of the issue fee.

In those instances where the joint inventors file separate oaths or declarations in an application filed before September 16, 2012, the order of names is taken from the order in which the several oaths or declarations appear in the application papers unless a different order is requested at the time of filing or a request under 37 CFR 1.48(f) is granted. For applications filed on or after September 16, 2012, the order of inventors is taken from an application data sheet in accordance with 37 CFR 1.76 if filed before or with the inventor’s oath or declaration unless a request under 37 CFR 1.48(f) is granted. A request under 37 CFR 1.48(f) may be filed on or after September 16, 2012 to change the order of the names of joint inventors in a nonprovisional application regardless of the filing date of the application.