What are an Inventor Declaration and a Patent Assignment?

Key Facts

• Declaration statute: 35 U.S.C. § 115; forms AIA/01 (declaration) and AIA/02 (substitute statement)
• Declaration deadline: Can be postponed until the issue fee is paid if an application data sheet naming the inventors is filed, with a surcharge for filing after the application date
• Assignment statute: 35 U.S.C. § 261; recorded through the USPTO Assignment Recordation Branch
• Recording deadline: None to be valid between the parties, but an assignment must be recorded within 3 months of execution, or before a later purchase, to defeat a subsequent bona fide purchaser
• Combined form: The two are often merged into a single combined declaration and assignment signed once
• Who owns by default: The inventor. Without an assignment, an employer has no title even if it paid for the work

The Inventor Declaration

Every inventor named in a US application must execute a declaration or oath, or a substitute statement must be filed on their behalf. Since the America Invents Act, the declaration can be filed late, and the inventor need not review the claims before signing if the application data sheet identifies them. A false declaration exposes the signer to criminal penalties and the patent to an unenforceability challenge.

When an inventor is deceased, legally incapacitated, cannot be found after diligent effort, or refuses to sign despite an obligation to assign, the applicant may file a substitute statement under § 115(d). Documenting the diligent effort is the paralegal's job, and it is the reason firms start collecting signatures at filing rather than at allowance.

The Assignment

Ownership never moves by itself. An employment agreement that says the employee "agrees to assign" future inventions is a promise, not a transfer; the Federal Circuit has repeatedly held that only present-tense language ("hereby assigns") conveys title automatically. Most companies therefore obtain a specific assignment for each application, identifying it by title and serial number, even when the employment agreement already exists.

Recording the assignment with the USPTO is not required for validity, but it provides constructive notice to the world and protects against a later competing transfer. Electronic recording is free for patents and takes minutes; the three-month rule in § 261 is the reason it is docketed.

Inventorship Is Not Ownership

Inventorship is a legal question about who conceived the claimed invention; it cannot be assigned or negotiated. Ownership follows from inventorship plus assignment. Naming the wrong inventors can be corrected under 35 U.S.C. § 256, but an unassigned co-inventor owns an undivided interest in the whole patent and can license it to anyone, including a competitor, without accounting to the others. That is why the invention disclosure stage, where contributors are first listed, is where most inventorship problems are either created or prevented.

Invention disclosure management that captures each contributor's role and routes the combined declaration and assignment for signature before filing closes this gap at the source.