USPTO News: Update Your Inventor Oath Forms

PatentLawPic159The Patent Office continues to beef-up its discussion of how to enforce Rule 1.56 duties of disclosure.  The most recent announcement declares that the Office will reject any inventor oath or declaration submitted after July 2008 that does not acknowledge a duty to disclose information material to patentability as defined in Rule 1.56.

37 CFR 1.63(b)(3) expressly requires that the oath include a statement that “acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.” Thus, this notice by the PTO can be seen simply as a nice way to announce future enforcement of the law.

The problem: Apparently, many of the oaths currently submitted only acnowledge a slightly narrower duty to disclose information “material to examination in accordince with 1.56(a).” 

Of course, all applicants (and individuals involved in prosecution) have the same duty to disclose regardless of which oath was signed.

  • PTO Notice of Oath Enforcement
  • Forms are available here: LINK
  • Query: Should 1.56 be modernized to include a duty on the company filing the patent allowing us to break free from “the antiquated notion that it is the inventor who files the application, not the company-assignee.

20 thoughts on “USPTO News: Update Your Inventor Oath Forms

  1. 20

    Yes, since last Aug. I’ve gotten declaration complaints on several applications filed at least 2 years ago. Fortunately they didn’t require late submission fees, just the nuisense of changing a word in the decl, getting the inventor to sign the new one, and then filing it as a “supplemental” declaration under rule 1.67(a). Most annoying!

  2. 19

    On a practical note, we’ve been getting an immediate slew of objected declarations based on the new enforcement guidelines. In view of the pre-OG notice, this seems to be counter to office policy of enforcing only re. declarations filed after 1 June 2008. Has anyone else been getting these rejections already?

  3. 18

    It appears the stink is over “material to examination” vs. “material to patentability”. So what do they want? (i) “the duty to disclose to the Office all information known to me to be material to patentability of this application as defined in 37 CFR 1.56”; (ii) “the duty to disclose to the Office all information known to me to be material to patentability as defined in 37 CFR 1.56”; (iii) (this is what PTO/SB/01 now states:) “the duty to disclose information which is material to patentability as defined in 37 CFR 1.56”. I think (i) is the clearest, but if the USPTO rejects the Oath, that means missing parts fees, which the lawyer will have to pay for getting the wording wrong. This is B.S.

    to the patentability of this application in accordance with 37 CFR 1.56

  4. 17


    Understood and agreed. Magic words make life so much easier.

    Unfortunately, I don’t find anything coming out of the PTO these days to be odd. Considering the backlog and pendency messes, and the debacle of the continuation/claim examination rules, one would think they have bigger fish to fry.

    But one would be wrong.

  5. 16


    Agreed. I just found it odd for the PTO to now say that “material to patentability” is broader than “material to examination,” especially since the CAFC more or less said it’s the other way around.

    My declarations would naturally say whatever magic words the PTO wants them to say.

  6. 15


    Applicants is not required by Rule 56 to submit info material to examination.

    If the applicant receives a Rule 105 Request for Information, than applicant has to submit it, but why state in the Dec that you’re aware of a duty and have complied when you really haven’t?

  7. 14

    “Since persons associated with the assignee already have a duty under 1.56, what’s there to change?”

    Well in theory a company’s duty could obligate company officers to make reasonably inquiries into what material information any of its employees might possess.

  8. 13

    “Should 1.56 be modernized to include a duty on the company filing the patent”

    No. It alreadys mentions persons associated with the assignee. Company-assignees can’t have deceptive intent. Only persons can. Since persons associated with the assignee already have a duty under 1.56, what’s there to change?

  9. 12

    “Should 1.56 be modernized to include a duty on the company filing the patent”

    Who is the company? Should IBM have routed all 3100 patents that issued in 2007 to all 355,000 of its employees?

  10. 11

    What about the CAFC’s discussion in Star Fruit in 2005 of “material to examination” in the context of Rule 105? That suggests that Rule 56’s “material to patentability” is actually narrower than “material to examination”, not the other way around. Here’s the passage:

    “[w]e think it clear that ‘such information as may be reasonably necessary to properly examine or treat the matter’…contemplates a zone of information beyond that defined section 1.56 as material to patentability , and beyond that which is directly useful to support a rejection or conclusively decide the issue of patentability.”

  11. 10


    Antiquated or not, can you imagine the chaos that would ensue if the duty of candor were imposed so that information material to patentability must be disclosed by anyone in a modern corporation? There would be no way to avoid inequitable conduct. At least as Rule 56 is now written, it is the inventors (who have signed the oath/declaration that says they are the inventors and attests that the application discloses their invention) and anyone involved in prosecution of the application with the duty. This should be sufficient.

  12. 9

    metoo: yes

  13. 8

    Could this signal that the new IDS rules (whatever the hell they might be) will be effective as of June 1, 2008?

  14. 7

    From MPEP Rev. 14, Nov. 1992 (the first revision after the rule change), discussing the change from “material to the examination” to “material to patentability” standard:

    “The definition of materiality in 37 CFR 1.56 does not impose substantial new burdens on applicants, but is intended to provide the Office with the information it needs to make a proper and independent determination on patentability…. The amendment to 37 CFR 1.56 was proposed to address criticism concerning a perceived lack of certainty in the materiality standard. The rule as promulgated will provide greater clarity and hopefully minimize the burden of litigation on the question of inequitable conduct before the Office….”

    Contrast this with Director Dudas’ advice regarding applicant’s duties arising from the differences between the standards (at the last paragraph on page 2 of the Revised Procedure), and you’ll understand a little more of where the Office is headed.

  15. 6

    I’m not sure this is all that significant. I believe that the PTO started cracking down on this issue, to some extent, several years ago. I seem to recall several oaths being bounced because they used the old language “material to examination” rather than the new “material to patentability” standard. I wonder if perhaps this is merely an attempt to have the problem fixed once and for all, rather than to keep bouncing oaths with the outdated language. In other words, perhaps what’s behind this is simply that, instead of continuing to bounce improper oaths and deal with the arguments raised by applicants in response (see the PTO notice), the PTO has decided to forgo bouncing oaths already filed and try to get prosecutors to finally change their forms. I think too much is being read into this.

  16. 5

    Did you check out the verb tenses in the Revised Procedure?

    “For pending applications… where the oath or declaration was filed prior to June 1, 2008”

    (Well, if the application is filed on May 1, 2008, it isn’t “pending” for this paragraph, is it? Or does the waiver just apply to applications pending on 1/22/08 where the oath or declaration is filed prior to June 1, 2008? Gosh.)

    “[W]as filed prior to June 1, 2008”

    (What month is it?)

    “[The] Office will accept an oath or declaration that contains the outdated language if the oath or declaration… (2) is being filed in a continuation or divisional application in which a claim for benefit under 35 USC 120 has been made to a prior-filed copending nonprovisional application… [with the oath or declaration having been “previously accepted” in the prior application]”

    (Well, if the application “is being filed” in the future, how can the benefit claim “ha[ve] been made” in the past? Couldn’t they have just said “is made”, or do they really mean to rule out some [problem] continuations from this exception? And does “previously accepted” mean prior to 01/22/08 or prior to June 1, 2008? Just hope we’ll never have to interpret the waiver.)

    You know what probably happened, one patent applicant was still using pre-1992 forms/language (from the old Rule 56 “material to the examination” standard) and got caught. That applicant was probably causing grief to the USPTO in one way or another (maybe with long-lived continuations), so now we have all the agency’s energy being directed toward this.

  17. 4

    The whole thing is absurd. Rule 1.56(a)specifies “all information known to that individual to be material to patentability AS DEFINED IN THIS SECTION.” The definition is in 1.56(b). Thus, 1.56(a) incorporates by reference the definition of “material to patentability” found in 1.56(b).

    If anyone thought they were disclaiming 1.56(b) by specifying only the obligations of 1.56(a), then they were deceiving themselves. If the PTO thinks this is a real issue, they are also deceiving themselves.

  18. 3

    I change my comment… Dennis’ original post had said that the PTO wanted the “known to the person” clause, but after reading the notice, the PTO wants “material to patentability as defined in 1.56” instead of “material to examination in accordance with 1.56”.

  19. 2

    Interestingly, the SB/01 declaration form on the PTO website states:
    “I acknowledge the duty to disclose information which is material to patentability as defined in 37 CFR 1.56…”

    and doesn’t say “known to the person”, like the PTO apparently wants. No wonder many of the declarations currently submitted have that “slightly narrower” duty…

  20. 1

    Way to tackle the most pressing issues, Dudas!

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