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US Inventor Declarations and Assignments

After a patent application has been filed, the inventor may be required to sign and submit various forms.  What happens if this is several years into the patent process, and the inventor can no longer be reached to sign these forms?  And what can you do now to prevent any complications from arising?  

One country which requires the inventor to submit signed forms is the USA.  Each inventor named on the application must submit a signed declaration and assignment with the US Patent and Trademark Office before payment of the Issue Fee.

What are US Declarations and Assignments?

An inventor declaration confirms the inventor’s belief that they are the original (or joint original) inventor of the claimed invention.  If an inventor declaration is not submitted by each inventor before payment of the Issue Fee, the application will be abandoned.

An assignment provides documentary evidence that the rights in the invention have been transferred from the inventor to the applicant, and that the applicant is the rightful owner of any patent granted for the claimed invention.  If a signed assignment is not submitted by each inventor before payment of the Issue Fee, the application could grant in the name of the inventor(s) instead of the applicant, although this can usually be rectified post-grant.

What if the inventor cannot or will not sign these forms?

In cases where the US application is filed later in the patent process, such as at the 12 month convention deadline, or even the 30 month national phase deadline, it is possible that the inventor(s) may no longer be available to sign the required forms (for example, they have left the company).  What happens then?

A substitute statement can be submitted in lieu of a declaration if an inventor is deceased, is under legal incapacity, has refused to sign the declaration, or cannot be found or reached after a diligent effort.  To demonstrate a “ diligent effort ”, it is usually sufficient to send a copy of the forms to the inventor’s last known address, along with an explanation of what is required and specifying a reasonable time-period for returning the signed forms (for example, 28 days).  If the forms are not returned by the end of this period, then it can be assumed that the inventor is no longer reachable.

If an inventor cannot or will not sign the required assignment to transfer their rights in the invention to the applicant, then one possible option where the inventor is an employee of the applicant is to submit their employment agreement in lieu of the assignment.  However, for the purposes of the USA, the employment agreement must address the employee’s obligation to assign any Intellectual Property (IP) rights created during their employment to their employer.  Ideally the document should contain language which indicates a present and active intent to assign any IP rights (for example, “ I hereby assign… ”), rather than language which merely indicates an intent to assign any IP rights in the future (for example, “ I agree to assign… ”).

If the employment agreement does not contain suitable language, one option is to rely on any local IP laws which legally require the employee to assign any IP rights to their employer.  For example, in the UK, section 39 of the Patents Act 1977 states that an invention made by an employee will automatically belong to the employer if:

“ (a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or

(b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer’s undertaking. ”

Therefore, if the employee and the employer are based in the UK and the invention falls into category (a) or (b) above, then the invention will automatically belong to the employer under UK law.

As such, in addition to filing a copy of the employment contract, a copy of the relevant local laws and a memorandum explaining why, under local law, the invention belongs to the employer can also be filed to prove full ownership of the application by the applicant.

What can the applicant do to avoid the above complications?

1/ Make use of PCT declarations if filing an International application, particularly:

  • (i) the declaration as to the identity of the inventor;
  • (ii) the declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent; and,
  • (iv) the declaration of inventorship (for the purposes of the designation of the USA).

For example, declaration (ii) satisfies the proof of right requirements in the Indian national phase, and (iv) satisfies the declaration requirements in the US national phase.  Declarations (i) and (ii) can be signed off by the acting attorney; declaration (iv) however must be signed by each inventor.

2/ Make sure any employment agreements, particularly for research & development staff, clearly address the employee’s obligation to assign any IP rights created, and include language which actively and presently assigns those rights to the employer.

If existing employment agreements do not contain such clauses, a separate agreement can be drawn up for the employee to sign and then appended to their contract. 

3/ Include a clause in the employment agreement requiring the employee to sign any necessary forms both during and after their employment.  This contractual agreement can be referred to should the employee actively refuse to sign any required forms later in the patent process.

Taking the above actions now can help to avoid any problems later in the patenting process which will likely incur unnecessary costs to rectify.  Should you require any assistance or advice, please contact me at christina .schiavone@ wynne-jones .com .

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uspto inventor assignment form

Navigating your patent assignment application

Did you know you can transfer ownership in your patent even before it's issued? Find out why inventors may want or be required to assign their patents.

Find out more about Patents

uspto inventor assignment form

by   Ronna L. DeLoe, Esq.

Ronna L. DeLoe is a freelance writer and a published author who has written hundreds of legal articles. She does...

Read more...

Updated on: January 22, 2024 · 3min read

Filing patent assignment applications

  • Why assignees need inventors' signatures

Assignment of a provisional patent

Some inventors prefer to sell their invention rather than retain the patent to it. You can assign your patent at any time, including before the patent is approved. You can even assign future patent rights to an invention that isn't yet patented.

Businessman selecting hexagon on glass screen containing word "patent" surrounded by other hexagons containing business-related symbols

By assigning your rights to the invention before applying for a patent , you can get paid for your invention immediately, rather than enduring the current two- to three-year wait from the United States Patent and Trademark Office (USPTO). In return, the purchaser, or assignee, receives your entire interest in the invention and can begin to profit from their investment.

It isn't required that you file a patent assignment application with the USPTO, but most patent attorneys urge you to do so, as it provides a record of the transfer of ownership. Unlike in a copyright contract, only the assignor-inventor of a patent has to sign the form, while the assignee does not. If there are multiple inventors, all must sign the assignment form. Although it's not required, it's advisable to have the document notarized, as is having witnesses to your signature.

After executing a written document of the assignment, an assignee or assignor who decides to file their patent assignment application with the USPTO has three months after the assignment is effective to do so. Include an official USPTO cover sheet with your assignment form when you file.

Why assignees need inventors' signatures

An employee or independent contractor may have no choice but to assign patent rights to their employer. In some industries, such as companies involved in technical and science development, assignment of rights is often a requirement in hiring contracts, which may contain patent assignment applications annexed to the contract. An employee who creates an invention during working hours or using company resources may expect their employer to actively seek their signature on a patent assignment to the company.

If an invention belongs to the employer company or to another assignee, it's important for the assignee to get signatures on a patent assignment document as soon as possible. Some of the reasons for doing so include that the inventor might:

  • Move and can't be located
  • Have ill will towards the company, due to being fired or other such situation
  • Be one of several inventors, so the company has to search for all inventors at a later date
  • Become incapacitated and unable to sign at a later date
  • Have no incentive to sign in the future
  • Have the patent tied up in a divorce

Getting signatures on a patent assignment shows that the company has clear title to the patent, which can provide assurance to investors and lenders that the company owns the patent free and clear of others' claims.

You can assign a provisional patent just like you would a nonprovisional, or utility, patent, which is one that has already been issued. A provisional patent , on the other hand, has not yet been issued but instead holds your place in line while you're waiting to get the patent, which can take several years. A provisional patent shows you've invented something unique that you're still working on. The language “patent pending" describes this type of patent.

Conversion of a provisional patent to a utility patent must occur within 12 months after filing the provisional patent. Patent attorneys also often advise assigning a provisional patent for the same reasons they advise getting inventors' signatures right away.

Although you may find it more beneficial to retain ownership of the patent, there are cases where assignment is more advantageous. Before you assign your patent, be sure to understand all the implications in doing so.

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Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

Patent Assignment: How to Transfer Ownership of a Patent

  • Intellectual Property
  • Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

What Is a Patent Assignment and Why Does it Matter?

A patent assignment is an agreement where one entity (the “assignor”) transfers all or part of their right, title and interest in a patent or application to another entity (the “assignee”). 

In simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent. 

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But  under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

Patent Assignment vs. Licensing

Keep in mind that an assignment is different from a license. The difference is analogous to selling versus renting a house.

In a license agreement, the patent owner (the “licensor”) gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership. Like a property rental, a patent license contemplates an ongoing relationship between the licensor and licensee.

In a patent assignment, the original owner permanently transfers its ownership to another entity. Like a property sale, a patent assignment is a permanent transfer of legal rights.

U sing Employment Agreements to Transfer Patent Ownership

Before your employees begin developing IP,  implement strong hiring policies  that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an  employment agreement  that establishes up front what IP the company owns — typically, anything the employee invents while under your employment. This part of an employment agreement is often presented as a self-contained document, and referred to as a “Pre-Invention Assignment Agreement” (PIAA).

The employment agreement should include the following provisions:

  • Advance assignment of any IP created while employed by your company, or using your company’s resources
  • An obligation to disclose any IP created while employed by your company, or using your company’s resources
  • An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
  • An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing  invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include  incentives to create and disclose valuable IP .

Drafting Agreements for Non-Employees

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

  • Independent contractors:  Some inventors may be self-employed, or they may be employed by one of your service providers.
  • Joint collaborators:  Some inventors may be employed by, say, a subsidiary or service company instead of your company.
  • Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

uspto inventor assignment form

O btaining Written Assignments for New Patent Applications

In addition to getting signed employment agreements, you should  also  get a written assignments for each new patent application when it’s filed, in order to memorialize ownership of the specific patent property.

Don’t rely exclusively on the employment agreement to prove ownership:

  • The employment agreement might contain confidential terms, so you don’t want to record them with the patent office
  • Because employment agreements are executed before beginning the process of developing the invention, they won’t clearly establish what specific patent applications are being assigned

While you  can  execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse to execute the assignment.

As such, we recommend executing the assignment before filing, to show ownership as of the filing date and avoid complications (like getting signatures from estranged inventors).

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

  • Be in writing:  Oral agreements to assign patent rights are typically not enforceable in the United States
  • Clearly identify all parties:  Include the names, addresses, and relationship of the assignor(s) and assignee
  • Clearly identify the patent being assigned:  State the patent or patent application number, title, inventors, and filing date
  • Be signed by the assignors
  • Be notarized : If notarization isn’t possible, have one or two witnesses attest to the signatures

Recording a Patent Assignment With the USPTO

Without a recorded assignment with the U.S. patent office, someone else could claim ownership of the issued patent, and you could even lose your rights in the issued patent in some cases. 

So the patent owner (the Assignee) should should record the assignment through the  USPTO’s Assignment Recordation Branch . They can use the  Electronic Patent Assignment System (EPAS)  to file a  Recordation Cover Sheet  along with a copy of the actual patent assignment agreement.

They should submit this paperwork  within three months  of the assignment’s date. If it’s recorded electronically, the USPTO  won’t charge a recordation fee .

Need to check who owns a patent?  The USPTO website  publicly lists all information about a patent’s current and previous assignments.

When Would I Need to Execute a New Assignment for a Related Application?

You’ll need only one patent assignment per patent application, unless new matter is introduced in a new filing (e.g., in a  continuation-in-part , or in a non-provisional application that adds new matter to a  provisional application ). In that case, you’ll need an additional assignment to cover the new matter — even if it was developed by the same inventors.

What If an Investor Won’t Sign the Written Assignment?

If you can’t get an inventor to sign an invention assignment, you can still move forward with a patent application — but you’ll need to document your ownership. To document ownership, you can often rely on an   employee agreement ,  company policy ,  invention disclosure , or other employment-related documentation.

D o I Need to Record My Assignments in Foreign Countries?

Most assignments transfer all rights, title, and interest in all patent rights throughout the world.

But in some countries, the assignment might not be legally effective until the assignment has been recorded in that country — meaning that the assignee can’t enforce the patent rights, or claim damages for any infringement that takes place before the recordation. 

And there might be additional formal requirements that aren’t typically required in the United States. For example, some countries might require a transfer between companies to be signed by both parties, and must contain one or both parties’ addresses.

If you’re assigning patents issued by a foreign country, consult a patent attorney in that country to find out what’s required to properly document the transfer of ownership.

N eed Help With Your Patent Assignments?

Crafting robust assignment agreements is essential to ensuring the proper transfer of patent ownership. An  experienced patent professional  can help you to prepare legally enforceable documentation.

Henry Patent Law Firm has worked with tech businesses of all sizes to execute patent assignments —  contact us now  to learn more.

GOT A QUESTION? Whether you want to know more about the patent process or think we might be a good fit for your needs – we’d love to hear from you!

uspto inventor assignment form

Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.

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The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012.

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The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012. These new provisions went into effect on September 16, 2012 and apply to all non-PCT U.S. patent applications filed under 35 U.S.C.§ 111(a) (including continuing and PCT bypass applications) filed on or after September 16, 2012. These provisions are applicable to oaths and declarations in design, plant, and reissue applications irrespective of the fact that they are not filed under 35 U.S.C.§ 111(a).

Forms are now available for download. Our old forms are also available since for PCT national stage applications, the new inventor's oath/declaration provisions only apply to applications having an international filing date on or after September 16, 2012. Accordingly, the old inventor oath/declaration forms should be used for any such national stage applications with an international filing date prior to September 16, 2012.

You will notice that there are now several options available: A combined Declaration/Assignment document or a Declaration document that will need to be filed with a separate Assignment instrument. In both cases a separate Power of Attorney form will need to be submitted. These forms are available on our "Download" tab above. The other noticeable change is that as a result of the new requirement for an Application Data Sheet to be submitted with all new applications, the Declaration form itself contains only very basic information, and each inventor signs his or her own copy of the Declaration or Declaration/Assignment form. All of the signed forms are then submitted to the USPTO.

Regarding the Power of Attorney, if an assignee files an application as the applicant, a Power of Attorney by Applicant form should be signed by a party authorized to act on behalf of the assignee. After a company provides our firm with an executed Power of Attorney by Applicant, it will not be necessary to provide us any further Power of Attorney forms for future filings of patent applications on behalf of that assignee so long as the assignee is the applicant in those cases. Accordingly, a copy of the Power of Attorney by Applicant will be filed along with a Transmittal form, which our firm will prepare and execute, identifying a specific application for the Power of Attorney.

Similarly, if there is no assignee, or if the assignee has opted not to file the application and not to take over prosecution to the exclusion of the Inventor(s), the Inventor(s) and/or an Inventor’s Legal Representative (if an Inventor is deceased or legally incapacitated) are the applicants and should execute the Power of Attorney by Applicant . This will grant our firm Power of Attorney for one specific patent application identified in an attached Transmittal form, which we will prepare and execute. If, however, the Inventor(s) are the original applicants of an application and an assignee or assignees wishes to take over prosecution to the exclusion of the Inventor(s), a representative of the company, i.e., the assignee, should execute a Power of Attorney to Prosecute to be filed along with a Statement Under § 3.73(c) establishing ownership of the application. To establish ownership, any Assignment from the Inventor(s) must be recorded concurrently with or prior to the filing of the Power of Attorney to Prosecute. Please note that the filing of an ADS with a new application sets forth the identification of the applicant. Where an application is filed without indentifying an assignee(s) as the applicant, the USPTO identifies the inventor(s) as the applicant. Under such circumstances, if the assignee wishes to be identified as the applicant, then the assignee(s) would need to execute a Power of Attorney to Prosecute to be filed along with along with a Statement Under § 3.73(c) rather than a Power of Attorney by Applicant.

The following USPTO patent forms may be installed on your computer. Please click on the appropriate declaration or assignment form below to see instructions on how to use the form and how to download/save it to your computer. You may then open and use the forms directly from your computer.

  • Power of Attorney Flowchart
  • Inventor Declaration for Utility or Design Application and Assignment for Single Assignee
  • Inventor Declaration for Utility or Design Application and Assignment for Multiple Assignees
  • Power of Attorney by Applicant (Inventor) - Use this form when the Inventor is granting Power of Attorney
  • Power of Attorney by Applicant (Assignee) - Use this form when the Assignee is granting Power of Attorney
  • Power of Attorney to Prosecute Applications Before the USPTO - Use this form if the Assignee wishes to take over prosecution to the exclusion of the Inventor(s)
  • Inventor Declaration for Utility or Design Application
  • Inventor Declaration for Plant Application
  • Supplemental Sheet for Declaration and Assignment Forms
  • Japanese Declaration and Assignment with Supplemental Sheet
  • Japanese Declaration and Assignment - Multiple Assignees
  • Single Assignee
  • Multiple Assignees

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uspto inventor assignment form

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to sign declarations for patent applications as required by the U.S. Patent and Trademark Office (USPTO) for all applications.  In other cases, inventors may have a falling out with employers or refuse to cooperate in signing declarations.  If patent applicants cannot acquire declarations from these unavailable or uncooperative inventors, significant difficulties may arise in patent prosecution, such as delayed issuance or application abandonment.  Fortunately, the USPTO provides for applicant control of patent prosecution by filing a substitute statement in the event a declaration cannot be obtained. This article summarizes the requirements of substitute statements and identifies pitfalls to avoid in preparing and filing substitute statements.

Substitute Statements

Applicants have the option of filing a substitute statement for unavailable inventors listed in applications filed on or after September 16, 2012.  A substitute statement may be submitted where an inventor is deceased, is legally incapacitated, cannot be found or reached after diligent effort, or refuses to execute a declaration.  35 U.S.C. § 115(d) . 

In cases where an inventor refuses to execute or cannot be found after diligent effort, the substitute statement may only be filed if the applicant is an assignee, an inventor on the same application, a party to whom the inventor is under an obligation to assign, or a party who otherwise has sufficient proprietary interest.   MPEP § 409.02 ,  MPEP § 409.05 . 

In cases where the inventor is deceased or legally incapacitated, the substitute statement may only be filed if the applicant is an assignee, a legal representative, a party to whom the inventor is under an obligation to assign, or a party who has sufficient proprietary interest.  If a legal representative of the inventor exists, then the applicant is not required to involve the legal representative.  MPEP § 409.01(a) .

A substitute statement must be filed before paying the issue fee or as otherwise outlined in the Notice of Allowability.  For national stage applications, the applicant must file the substitute statement no later than the filing of a Request for Continued Examination (RCE).

Substitute Statement Requirements

In addition to complying with the requirements of  35 U.S.C. § 115(b) , the executor of the substitute statement must: 1) identify the person executing the substitute statement and the relationship to the non-signing inventor; 2) identify the basis for which a substitute statement is required; 3) acknowledge the penalties clause under  37 C.F.R. 1.64(e) ; 4) identify the inventor to whom the statement applies; 5) review and understand the contents of the application (including the claims); and 6) be aware of the duty to disclose to the USPTO all information known to the person to be material to patentability as defined in  37 C.F.R. 1.56 .

Additionally, the legal name of each inventor is required in the substitute statement if not already provided in an Application Data Sheet (ADS).  The last known mailing address and the residence of both the executor of the substitute statement and the non-signing inventor (unless deceased or legally incapacitated) are required if not already provided in the ADS.

If a substitute statement is required on the basis that the inventor cannot be reached with diligent efforts, the USPTO may require that evidence be provided showing why the inventor is unavailable and the efforts made to contact the inventor.  Remember to document all attempts to have the inventor sign the declaration in the event that the USPTO requests evidence submission after the filing of a substitute statement.  Examples of such documentation are sent emails, U.S. mail return receipts, mail tracking number receipts, and mail tracking provided online by the mail service used to mail declaration information to an inventor.

Substitute Statement Alternatives

A signed assignment may serve as a declaration if the assignment includes the information and statements required in  37 C.F.R. 1.63(a)  and if a copy of the assignment is recorded in the USPTO’s assignment database.  A copy of an inventor’s declaration from a prior application in a benefit chain may also serve as a declaration for the unavailable inventor if the declaration meets all required declaration requirements.  A prior declaration may be insufficient if, for example, the prior declaration is for an application subject to pre-AIA rules and the instant application is subject to post-AIA rules, which have different declaration language requirements than pre-AIA rules.

Final Considerations

Patent applicants can gain control over patent prosecution and assert patent rights by filing a substitute statement. Before filing a substitute statement, applicants should coordinate with patent counsel regarding their particular circumstances and should consult current USPTO rules.

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Filing an Assignment and Oath/Declaration for a Deceased Inventor

In law, the details are everything.  One slight variation in the facts changes the outcome.  One example is satisfying the assignment and declaration requirements for a deceased inventor in Post-AIA patent applications.

Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent.  35 U.S.C. § 154(a)(1).  Under normal circumstances, the inventors are considered the owners of a patent but can assign their ownership rights by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable ownership interest in the patent or application.  35 U.S.C. § 261 .

Assignment from Deceased Inventor

When there are joint inventors and one or more is deceased, assigning ownership becomes a more complex process.  The chain of ownership should be established from the deceased to his heirs and then from the heirs to the assignee.  This can be accomplished, for example, by using court documents confirming the heirs of the deceased inventor and having those heirs assign their rights to the assignee.  In addition, the remaining living inventors should also transfer their ownership rights to the assignee.

Oath/Declaration Requirement for Deceased Inventor

Under 35 U.S.C. § 117, legal representatives of deceased inventors may make application for a patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor.  In addition, a person to whom a deceased inventor was under an obligation to assign the invention – such as an employer – may also make application for a patent.  35 U.S.C. § 118.  To satisfy the oath or declaration requirement, a Substitute Statement (USPTO form AIA/02) must be executed by someone authorized to do so.  37 C.F.R. 1.64(a).

Once you have all of the above elements, fulfilling the assignment requirements is as easy as uploading to the USPTO and recording the three separate assignments – living inventors, documents establishing heirship, and the heir’s assignment.  Similarly, fulfilling the oath or declaration requirements is as easy as submitting oaths/declarations from living inventors and a Substitute Statement executed on behalf of a deceased inventor.

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  1. Forms for patent applications

    Inventor's Oath or Declaration (Quick Reference Guide) Nonpublication Request Patent Cooperation Treaty (PCT) Patent Electronic System Verification Form Petitions Pilot Programs Power of Attorney and Change of Correspondence Address Prioritized Examination Priority Document Exchange Provisional Patent Application Reexamination

  2. 301-Ownership/Assignability of Patents and Applications

    The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of ...

  3. Assignment Center

    Copy assignment: The new copy function allows you to copy an existing assignment and edit the details so it is accurate for the new assignment. This feature saves you from reentering previously entered information. January 16, 2024. Customer service phone line. Toll free: 1-800-972-6382 | Local number: 571-272-3350.

  4. Patents Assignments: Change & search ownership

    The original owner should record the assignment or name change with the USPTO's Assignment Recordation Branch by going to Assignment Center and filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change. Change Ownership - Assignment Center

  5. PDF Declaration (37 CFR 1.63) for Utility or Design Application Using an

    (other than a check or credit card authorization form PTO-2038 submitted for payment purposes) is never required by the USPTO to support a petition or an application. If this type of personal information is included in documents submitted to the USPTO, ... Use an additional PTO/AIA/01 form for each additional inventor. A Federal agency may not ...

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    303-Assignment Documents Not Endorsed on Pending Applications. 304‑305- [Reserved] 306-Assignment of Division, Continuation, Substitute, and Continuation-in-Part in Relation to Parent Application. 306.01-Assignment of an Application Claiming the Benefits of a Provisional Application. 307-Issue to Non-Applicant Assignee.

  7. US Inventor Declarations & Assignments

    1/ Make use of PCT declarations if filing an International application, particularly: (i) the declaration as to the identity of the inventor; (ii) the declaration as to the applicant's entitlement, as at the international filing date, to apply for and be granted a patent; and,

  8. Patent form finder

    MyUSPTO Patent form finder Forms for patent applications filed on or after September 16, 2012 If you need a single form ... Start typing the form name or browse If you need a group of forms ... Start typing the type of transaction or browse All patent forms | Need form instructions?

  9. Navigating your patent assignment application

    Filing patent assignment applications. It isn't required that you file a patent assignment application with the USPTO, but most patent attorneys urge you to do so, as it provides a record of the transfer of ownership. Unlike in a copyright contract, only the assignor-inventor of a patent has to sign the form, while the assignee does not.

  10. Patent Assignment: How to Transfer Ownership of a Patent

    But under U.S. law, only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business. Patent Assignment vs. Licensing Keep in mind that an assignment is different from a license.

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    Power of Attorney by Applicant (Assignee) - Use this form when the Assignee is granting Power of Attorney Power of Attorney to Prosecute Applications Before the USPTO - Use this form if the Assignee wishes to take over prosecution to the exclusion of the Inventor (s) Inventor Declaration for Utility or Design Application

  12. Sample Patent Assignments

    ASSIGNMENT OF RIGHTS OF PATENT: An assignment is intended for use for a patent that has been issued by the U.S. Patent and Trademark Office (USPTO). ASSIGNMENT OF RIGHTS TO APPLICATION: This type of assignment is for the rights to an invention for which a patent application has been filed.

  13. Patent Application Declarations for Unavailable or Uncooperative Inventors

    A signed assignment may serve as a declaration if the assignment includes the information and statements required in 37 C.F.R. 1.63(a) and if a copy of the assignment is recorded in the USPTO's assignment database. A copy of an inventor's declaration from a prior application in a benefit chain may also serve as a declaration for the ...

  14. Starting a patent assignment request in Assignment Center

    Published on: January 29, 2024 14:47 Learn how to use start a patent request in Assignment Center. Assignment Center is a publicly available USPTO system for recording assignments and other documents relating to interests in patents and trademarks. Other ways to view this video Watch it on YouTube

  15. Assignment Center

    An official website of the United States government. Here's how you know keyboard_arrow_down

  16. Form-Fillable PDFs Available

    USPTO currently has the following Form-Fillable PDFs available that will provide auto-loading of data directly into USPTO databases: SB08a Information Disclosure Statement [PDF] (version 2.1.17, 31JAN2010)>> Instructions [DOC]

  17. USPTO Issues Final Rules: Inventor's Oath or Declaration

    On August 14, 2012, the USPTO issued final rules, effective September 16, 2012, that implement provisions of the Leahy-Smith America Invents Act related to an inventor's oath or declaration. The rules streamline the statements required in an inventor's oath or declaration and permit these statements to be included in an assignment.

  18. United States Patent and Trademark Office

    This searchable database contains all recorded Patent Assignment information from August 1980 to the present. When the USPTO receives relevant information for its assignment database, the USPTO puts the information in the public record and does not verify the validity of the information. Recordation is a ministerial function--the USPTO neither ...

  19. USPTO issues inventorship guidance and examples for AI-assisted

    USPTO issues inventorship guidance and examples for AI-assisted inventions. To incentivize, protect, and encourage investment in innovations made possible through the use of artificial intelligence (AI), and to provide the clarity to the public and United States Patent and Trademark Office (USPTO) employees on the patentability of AI-assisted inventions, the USPTO has published guidance in the ...

  20. Inventorship Guidance for AI-Assisted Inventions

    This repetition of headings to form internal navigation links has no substantive legal effect. ... (37 CFR 1.64) as either an inventor or joint inventor will be considered by the USPTO to have ... Applicants should keep in mind that the recording of assignments and other related documents by the USPTO is a ministerial act, and assignments and ...

  21. Patent Application Declarations for Unavailable Inventors

    A signed assignment may serve as a declaration if the assignment includes the information and statements required in 37 C.F.R. 1.63(a) and if a copy of the assignment is recorded in the USPTO's ...

  22. Filing an Assignment and Oath/Declaration for a Deceased Inventor

    Filing an Assignment and Oath/Declaration for a Deceased Inventor In law, the details are everything. One slight variation in the facts changes the outcome. One example is satisfying the assignment and declaration requirements for a deceased inventor in Post-AIA patent applications.

  23. Inventor Oath and Declaration Changes under the America Invents Act

    To facilitate the transition to the new rules, the USPTO provides an exemplary declaration form, Form PTO/AIA/01, that can be found on its website. In the event a substitute statement is being filed in relation to one or more inventors, Form PTO/AIA/02 is provided on the USPTO website and may be used under the appropriate circumstances.