Timeline of Declaration Filing/Using an ADS

Author: Adriana L. Burgy
Editor: Michele C. Bosch

The chart above and the information below provide guidance for filing an inventor’s oath or declaration and submitting an Application Data Sheet (ADS). The information is meant to illustrate different scenarios and as such, one should consult the specific regulations based on any particular scenario.

• With Application Filing
  • Filling and Considerations
    • Signed ADS – A nonprovisional patent application should be filed with a signed ADS.
      • Permits postponing submission of an inventor’s oath or declaration until payment of the issue fee.
      • A claim for domestic priority or foreign priority (except foreign priority for national stage applications) must be included in an ADS.
  • No inventor’s oath or declaration – If an inventor’s oath or declaration is not filed with the application, a surcharge will be due to file the inventor’s oath or declaration after filing of the application.
    • If a general authorization to charge any required fees to a deposit account is submitted with the application, the USPTO will charge the deposit account for the surcharge in accordance with the deposit account authorization.
  • No signed ADS or inventor’s oath/declaration.
    • The USPTO will send a Notice to File Missing Parts and require (1) either an ADS or inventor’s oath/declaration executed; and (2) payment of a surcharge for the filing of the inventor’s oath or declaration after the filing date of the application.
• During Prosecution
  • Filling and Considerations
    • Information may be corrected or updated by filing a new ADS with only the sections containing the changed or updated information.
      • Depending on the type of changes made, there may be additional requirements.
  • Delay in filing the inventor’s oath or declaration may have patent term adjustment implications.
    • For example, entry into the national stage no longer requires submission of the inventor’s oath or declaration. Delaying submission of the inventor’s oath or declaration may impact patent term adjustment.
• Before Payment of the Issue Fee
  • Filling
    • If an inventor’s oath or declaration was not previously submitted, it must be filed prior to payment of the issue fee.

The longer the delay, the more difficult it may be to obtain an inventor’s signature.

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. Additional disclaimer information.