[Code of Federal Regulations] [Title 37, Volume 1] [Revised as of July 1, 1999] From the U.S. Government Printing Office via GPO Access [CITE: 37CFR1.63] [Page 41-42] TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS CHAPTER I--PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents Subpart B--National Processing Provisions Sec. 1.63 Oath or declaration. (a) An oath or declaration filed under Sec. 1.51(b)(2) as a part of an application must: (1) Be executed in accordance with either Sec. 1.66 or Sec. 1.68; (2) Identify the specification to which it is directed; (3) Identify each inventor by: full name, including the family name, and at least one given name without abbreviation together with any other given name or initial, and the residence, post office address and country of citizenship of each inventor; and (4) State whether the inventor is a sole or joint inventor of the invention claimed. (b) In addition to meeting the requirements of paragraph (a), the oath or declaration must state that the person making the oath or declaration: (1) Has reviewed and understands the contents of the specification, including the claims, as amended by any amendment specifically referred to in the oath or declaration; (2) Believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought; and (3) Acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in Sec. 1.56. (c) In addition to meeting the requirements of paragraphs (a) and (b) of this section, the oath or declaration in any application in which a claim for foreign priority is made pursuant to Sec. 1.55 must identify the foreign application for patent or inventor's certificate on which priority is claimed, and any foreign application having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month and year of its filing. (d)(1) A newly executed oath or declaration is not required under Sec. 1.51(b)(2) and Sec. 1.53(f) in a continuation or divisional application, provided that: (i) The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section; (ii) The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application; [[Page 42]] (iii) The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and (iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application. (2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application. (3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under Sec. 1.47, the copy of the executed oath or declaration for such prior application must be accompanied by: (i) A copy of the decision granting a petition to accord Sec. 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under Sec. 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and (ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application. (4) Where the power of attorney (or authorization of agent) or correspondence address was changed during the prosecution of the prior application, the change in power of attorney (or authorization of agent) or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney (or authorization of agent) or correspondence address during the prosecution of the prior application. (5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application. (e) A newly executed oath or declaration must be filed in any continuation-in-part application, which application may name all, more, or fewer than all of the inventors named in the prior application. The oath or declaration in any continuation-in-part application must also state that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in Sec. 1.56 which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application. (35 U.S.C. 6, Pub. L. 97-247) [48 FR 2711, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983, as amended at 57 FR 2034, Jan. 17, 1992; 60 FR 20225, Apr. 25, 1995; 62 FR 53188, Oct. 10, 1997]