Declaration for Utility or Design Patent Application

If you need help with your declaration for a utility or design patent application, then you’ll want to conduct some research online first to see what steps are necessary for declaring your application. For this, you can visit the U.S. Patent and Trademark Office (“USPTO”) website. 

For all new patent applications (filed on or after 9/16/12), you’ll need to submit form PTO/AIA/01. However, if you have an older application that predates 9/16/12, then you’ll be required to file an old declaration. In order to find out if your application is new or old, you can look at the filing date that was on your original U.S. patent application.

Old vs. New Declaration

  • The new declaration does not include an area to list all of the inventors. Rather, only one inventor can sign the declaration. However, for the old declaration form, there will be areas on the form that allow for as many signatures as need be. This means that all inventors can sign the form.
  • The new declaration does not include terms such as “the signer has reviewed and understood the application, including claims that arise. . .”
  • The new declaration does not include a duty to disclose.
  • For old declarations, if no one can find the inventor or if he or she declines to sign the form, those familiar with the invention and who have facts surrounding the issue, will sign it, draft a petition, pay a fee, and submit to the USPTO.
  • For new declarations, if the inventor can’t be found or doesn’t want to sign the form, you can fill out Form PTO/AIA/02 and submit it to the USPTO. This form will replace the new declaration. No other petitions or fees are required.
  • For those inventors who are deceased, a Power of Attorney can act on behalf of the inventor so long as he or she is authorized to do so.
  • For those inventors who are legally incapacitated, a legal representative can also act on behalf of that individual if he or she is authorized to do so.
  • If, however, the inventor originally filed the declaration and application, but during that time period, became legally incapacitated or passed away, the Power of Attorney or legal representative can take over on behalf of the inventor. However, keep in mind that this could cause legal issues as the Power of Attorney may have no interest in continuing with the declaration for the utility or design patent application.
  • If an inventor no longer wishes to move forward with the declaration for application, the inventor can assign his or her rights to an assignee. Before the declaration can be made, however, there must be a filed document from the inventor that specifically establishes his or her interest in assigning ownership to another.
  • Other legal issues could prevent the utility or design declaration depending on how many inventors are involved, and if all inventors are willing to sign the form. Further, such issues could arise based on the legal capacity of the inventor, i.e., death or legal incapacitation, as noted above. You, as an inventor, will want to ensure that all other inventors to your idea/creation are voluntarily signing the declaration, particularly for old applications predating 9/16/12.
  • An example of an inventor refusing to sign would be an invention with five separate inventors. Three of the five sign; however, the remaining two don’t sign. In this case, for new applications, the remaining inventors will submit six separate forms—three PTO/AIA/01 forms (for the three inventors who fill out the form and sign it), two PTO/AIA/02 forms (for those who refused to sign or cannot be found), and an Application Data Sheet (“ADS”).

What is an ADS?

An ADS is form PTO/SB/14. Under the new rules, for those declarations dated on or after 9/16/12, this document is generally mandatory. This document can be easily filled out online, as all pedigree information can be auto-loaded, eliminating manual error when submitting to the USPTO. Be sure to proofread the information before submitting it. However, if you notice an error after you’ve submitted, you can immediately begin the process of editing the submission and re-submitting to the USPTO online.

If you need help with declaring a utility or design patent application, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.