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In order for a patent to issue in the United States, an inventor is required to execute an oath/declaration. The oath/declaration states that the signator believes “I am the original inventor or an original joint inventor of a claimed invention in the application.” The signator must also “acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.” The oath/declaration must be filed in the United States patent and Trademark Office (USPTO) before the application can issue as a patent.

A recent matter decided in the U.S. International Trade Commission highlights the importance of having only the actual inventors execute the oath/declaration. The Judge ruled that an importer of child carriers did not infringe a patent, at least because the patent was held to be unenforceable, due to inequitable conduct during prosecution of the patent application.

When the application was filed, the inventor and her husband each signed and filed with the USPTO a declaration that stated that each was an original inventor of the disclosed invention. The inventor and her husband each acknowledged the duty to disclose information which is material to patentability and stated that their statements “are true” and are “made with knowledge that willful false statements and the like are punishable by fine or imprisonment... and that such willful false statements may jeopardize the validity of the application or any patent issued thereon.”

Based on the testimony of the inventor and the non-inventor signers of the declaration, it was determined that they believed that having a U.S. citizen on the application would bolster the protection, strength and permanence of the patents. The non-inventor signer admitted he was not an inventor and the inventor signer also knew that this was the case.

The declarants were represented by counsel and thus were presumed to know the law of inventorship. The Judge determined that the declaration to the Patent Office was false and was done to gain a clear benefit. Thus, the submission of the false declaration of inventorship was considered a “grievous misconduct” and the patent was ruled unenforceable.

Applicants must only include inventors that have actually participated in the invention of the claimed subject matter. It is also necessary to monitor inventorship during prosecution to avoid allegations of inequitable conduct. Cancellation or addition of claims can change inventorship. For example, if an inventor’s contribution has been removed from the claims, it is necessary to update inventorship. In addition, if a divisional or continuation application is filed, consideration as to whether inventorship has changed must be considered.