How to Prepare the Declaration of Inventorship. Episode 29

The Declaration of Inventorship

We’re almost done covering the paperwork needed for filing a patent application. In this episode, I’ll discuss a required form called the Declaration of Inventorship. This will be one of the shortest episodes because there isn’t much to it.

One of the fundamental rules for obtaining a patent in the United States is that you must be one of the actual inventors. This may seem obvious, but not everyone understands this requirement. I once received a call from someone who wanted to patent a new kind of ice cream cone. When I asked when he invented it, he told me that he didn’t invent it—he saw a street vendor selling it and wanted to patent it before the vendor could. That’s not how the U.S. patent system works. You must be the inventor to apply for a patent.

All inventors named in the application must sign a declaration form affirming that they are an inventor of the invention being claimed. The correct USPTO form to use is PTO/AIA/01, titled “Declaration for Utility or Design Application Using an Application Data Sheet.” I discussed the Application Data Sheet (ADS) in the last episode, so I’m assuming you are using one. If so, this is the form you will need.

Which Form Should You Use?

There are other declaration forms that apply in special cases:

• Plant patents,

• Reissue applications,

• Non-English declarations, and

• Other less common situations.

However, for most applicants, PTO/AIA/01 is the correct form.

How to Fill Out the Declaration of Inventorship

If you are filing the declaration at the same time as the rest of your application:

• Fill in the title of your invention on the top line.

• Check the box that states “This declaration is directed to the attached application.”

If you are filing the declaration after submitting your application:

• Check the other box.

• Enter the application number and filing date of your previously filed application.

If you do not file the declaration at the time of filing, there is a late fee that you must pay.

• As of now, the fee ranges between $40 and $160, depending on your entity status (e.g., large entity, small entity, or micro entity).

At the bottom of the form:

• Print and sign your name.

• Optionally, enter the date.

Make sure you are using the most current version of the form, as it has changed in recent years. Older versions are no longer valid.

What You Are Signing

By signing this form, you are declaring that:

1. The application was made or authorized by you.

2. You believe you are the original inventor or a joint inventor.

3. You understand that knowingly making false statements can result in fines, imprisonment for up to five years, or both.

So, don’t sign the declaration or file a patent application unless you are one of the actual inventors—unless you like fines and prison time!

That’s all for the Declaration of Inventorship. I’m Adam Diament, and until next time, keep on inventing!