| General Information |
Referenced Items (160, 161, 162, 163, 164, 165, 166, 167, 168, 169, 170, 171, 172, 173, 174, 175, 176) |
(174) Information in Oath/Declaration
Necessary to Identify the Specification
for an Application filed under 35 USC 111
in Accordance with 37 CFR 1.63
This notice supersedes the previous notice published at 1035 Off. Gaz.
Pat. Office 3 on September 12, 1983, and is intended to make it easier
for an applicant(s) to comply with the identification requirement of 37
CFR 1.63.
37 CFR 1.63 requires that an oath or declaration identify the
specification to which it is directed. The declaration form suggested by
the Office includes spaces for filling in the names of the inventors,
title of invention, application number, filing date, foreign priority
application information and United States priority application
information. While this information should be provided, it is not
essential that all of these spaces be filled in order to adequately
identify the specification in compliance with 37 CFR 1.63(a)(2).
The following combinations of information supplied in an oath or
declaration filed on the application filing date with a specification
are acceptable as minimums for identifying a specification and
compliance with any one of the items below will be accepted as complying
with the identification requirement of 37 CFR 1.63:
(1) name of inventor(s), and reference to an attached specification
which is both attached to the oath or declaration at the time of
execution and submitted with the oath or declaration on filing;
(2) name of inventor(s), and attorney docket number which was on the
specification as filed; or
(3) name of inventor(s), and title which was on the specification as
filed.
Filing dates are now granted on applications filed without an oath or
declaration in compliance with 37 CFR 1.63, the oath or declaration
being filed later with a surcharge. The following combinations of
information supplied in an oath or declaration filed after the filing
date are acceptable as minimums for identifying a specification and
compliance with any one of the items below will be accepted as complying
with the identification requirement of 37 CFR 1.63:
(1) name of inventor(s), and application number (consisting of the
series code and the serial number; e.g.,08/123,456);
(2) name of inventor(s), serial number and filing date;
(3) name of inventor(s) and attorney docket number which was on the
specification as filed;
(4) name of inventor(s), title which was on the specification as
filed and filing date;
(5) name of inventor(s), title which was on the specification as
filed and reference to an attached specification which is both attached
to the oath or declaration at the time of execution and submitted with
the oath or declaration; or
(6) name of inventor(s), title which was on the specification as
filed and accompanied by a cover letter accurately identifying the
application for which it was intended by either the application number
(consisting of the series code and the serial number; e.g.,08/123,456),
or serial number and filing date. Absent any statement(s) to the
contrary, it will be presumed that the application filed in the PTO is
the application which the inventor(s) executed by signing the oath or
declaration.
Any specification that is filed attached to an oath or declaration on
a date later than the application filing date will not be compared with
the specification submitted on filing. Absent any statement(s) to the
contrary, the "attached" specification will be presumed to be a copy of
the specification and any amendments thereto which were filed in the
Office in order to obtain a filing date for the application.
 Top of Notices (174) December 29, 2020 |
US PATENT AND TRADEMARK OFFICE |
1481 CNOG 523 |
Any variance from the above guidelines will only be considered upon
the filing of a petition for waiver of the rules under 37 CFR 1.183
accompanied by a petition fee (37 CFR 1.17(h)).
Further, an oath or declaration attached to a cover letter
referencing an incorrect application may not become associated with the
correct application and, therefore, could result in the abandonment of
the correct application.
Supplemental oaths or declarations in accordance with 37 CFR 1.67
will be required in applications in which the oaths or declarations are
not in compliance with the other requirements of 37 CFR 1.63 but contain
sufficient information to identify the specifications to which they
apply as detailed above.
A copy, such as a photocopy or facsimile transmission, of an
originally executed oath or declaration is acceptable and may be filed.
In the event that a copy of the original is filed, the original should
be retained as evidence of authenticity. If a question of authenticity
arises, the Patent and Trademark Office may require submission of the
original. See 37 CFR 1.4(d)(2).
See MPEP 1896 for the identification requirements for a
declaration filed in a U.S. national stage application filed under 35
USC 371.
These changes will appear in MPEP 601.01 in the next revision of
the Manual.
July 13, 1995 STEPHIN G. KUNIN
Deputy Assistant Commissioner
for Patent Policy and Projects
[1177 OG 60]