This is a question that I often am asked when inventors have been working with us for an extended period of time. In the past, we could use an existing, executed declaration in the family for a new member, but not after changes to the oath and declaration went into effect on September 16, 2012.
The changes to the Oath and Declaration are provided for in 35 U.S.C. §§ 115 and 118. Under the changes, someone other than an inventor or a joint inventor can file a patent application. Moreover, the term "applicant" is no longer synonymous to an inventor. With the changes, an assignee or other person who can show a sufficient proprietary interest in the invention may be the applicant.
Under the new rules, the Oath or Declaration being executed by an inventor or joint inventors must include certain language. In particular, the Oath or Declaration must state 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." In addition, a Declaration must state that the inventor acknowledges the penalties applicable for any willful false statement that is punishable under 18 U.S.C. § 1001. Older declarations often do not have this magic language and need to be updated.
The Oath or Declaration, however, does not require: (1) the names of all inventors, (2) identification of an inventor's citizenship, (3) that the inventor believes himself or herself to be the "first" inventor, or (4) foreign priority claims. The Oath or Declaration also does not require a statement that the person making the Oath or Declaration acknowledges the duty of disclosure; or has reviewed and understood the contents of the application. A person may not execute an Oath or Declaration, however, unless the person is aware of the duty of disclosure and has reviewed and understood the contents of the application.
There are also circumstances where an inventor does not have to execute the Oath or Declaration. The rules provide that a substitute statement may be filed by a non-inventor applicant (e.g., an assignee) if the inventor (or joint inventor) is (1) deceased, (2) legally incapacitated, (3) cannot be found or reached after diligent effort, or (4) refuses to execute an oath or declaration. Under these circumstances, the non-inventor applicant may sign the substitute statement with respect to the inventor so long as the substitute statement (1) identifies the inventor with respect to whom the statement applies, (2) identifies the person executing the substitute statement and the relationship to the non-signing inventor, and (3) identifies the permitted basis under which the substitute statement is being filed (i.e., the inventor is deceased, legally incapacitated, cannot be found after diligent effort or refuses to execute).
An assignment may also serve as the Oath or Declaration under the new rules. Here, the assignment must include the information and statements required for an Oath or Declaration under the new rules. In addition, a copy of the assignment must be recorded in the USPTO's assignment database.
An Oath or Declaration is not required at the same time that the application is filed. Instead, an applicant may submit an application data sheet that identifies each inventor by his or her legal name and provides a mailing address and residence for each inventor. The Oath or Declaration (or substitute statement) is required, however, once the application is in condition for allowance.
So, as you can see, the request for a new Oath or Declaration will assure compliance with the current rules.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
