In this edition, we consider the inventor oath or declaration and assignment registration requirements of the IP5 offices. While the U.S. Patent and Trademark Office (USPTO) is the only IP5 office that mandates an inventor’s declaration prior to patent issuance, all of the IP5 offices have some requirement for registering a patent assignment. This article will look at each of the IP5 countries’ requirements for inventor oath or declaration and assignment recordation.

United States
Under 35 U.S.C. § 115, an inventor’s oath or declaration is required for all utility, design, and plant patent applications, as well as applications entering the national stage under 35 U.S.C. § 371. An oath or declaration under § 115 must contain statements that (1) the application was made or was authorized to be made by the affiant or declarant; and (2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.

Where an inventor’s signature cannot be obtained on a declaration, a substitute statement may be executed for that inventor by an applicant under 37 C.F.R. § 1.46 (i.e., assignee, obligated assignee, or party who shows sufficient proprietary interest) in the following circumstances: (1) the inventor is deceased or legally incapacitated; (2) the inventor refuses to sign the declaration; and (3) the inventor cannot be found or reached after diligent effort. See 37 C.F.R. § 1.64.

An assignment that contains the information and statements in an oath or declaration may be used as the inventor’s oath or declaration. The assignment must, however, be recorded with the USPTO. Submission of the inventor’s oath or declaration may be postponed until the application is in condition for allowance if an Application Data Sheet (ADS) is filed that identifies the entire inventive entity, including legal name, residence, and mailing address for each inventor.

Under 35 U.S.C. § 261, applications for patent, patents, or any interest therein is assignable in law by an instrument in writing. The assignment may be recorded in the USPTO upon payment of a recordation fee, but recordation is not a requirement for patent examination or issuance. However, if an assignment is not recorded within three months after signing, the assignee stands the risk of having its rights subordinated to a subsequent bona fide purchaser or lender acting without notice of the assignment. The assignment for a parent patent/application may be recorded for a divisional or continuation application, but a continuation-in-part (CIP) application requires a new assignment conveying rights in the CIP. This is because a CIP application may contain new matter, which creates new intellectual property.

When an assignment is recorded, the USPTO simply puts the information on the public record—the USPTO does not make a determination of the legality of the transaction or the validity of the information being recorded.

China
Pursuant to Article 7 of the Chinese Patent Law, the right to apply for a patent and the patent right may be assigned. However, any assignment by a Chinese entity or individual to a foreigner, foreign enterprise, or other foreign organizations must be approved by the relevant department under the State Council. Article 10 of the Chinese Patent Law further provides that where the right to apply for a patent or the patent right is assigned, the parties have to enter into a written contract and the contract has to be registered with the patent administration department under the State Council. If the applicant of a priority application is different from the applicant of a corresponding Chinese application, an assignment document is required as part of the patent application. A certified/notarized copy of a foreign assignment of the priority application is acceptable for this purpose.

Japan
Article 27 of the Japan Patent Act provides that patent rights, exclusive or nonexclusive licenses, and a right of pledge on patent right or license have to be registered in the patent registry maintained by the Japanese Patent Office (JPO). To record a change in ownership, it is necessary to file an assignment document and a power of attorney with the JPO. The original or a certified copy of the assignment document is required to record the assignment with the JPO; photocopies are not accepted.

South Korea
Under Article 99 of the Korean Patent Act, assignment and joint ownership of patents or patent applications are recognized. If a patent or a patent application is jointly owned, no owner can transfer his share without obtaining the consent of all the other joint owners. Exclusive and nonexclusive licenses are also available under Articles 100 and 102 of the Korean Patent Act.

Except in the case of inheritance or other general succession, assignment of patent rights must be recorded in the Korean Intellectual Property Office in order to become effective. Documents required for the recordation are a deed of assignment executed by the assignor, a Notarized Corporate Nationality Certificate executed by the assignor, and a power of attorney of the assignor and assignee.

Europe
A European patent application can be assigned, transferred, and licensed as an object of property. Article 72 EPC provides that assignments must be in writing and signed by both parties. Rule 22 EPC provides the rules for recording assignments at the European Patent Office. Documents providing evidence of transfer and appropriate fees must be paid for recording an assignment at the EPO.

Rule 85 EPC provides that assignments of granted European patents may be recorded at the EPO during the nine-month opposition period and while an opposition is pending. However, not all member states recognize such post-grant recordations at the EPO. Following the opposition period, assignments of granted European patents must be recorded separately with the national authorities.