I am named as an inventor on a patent that I assigned to company A 17 years ago. At the time, I was employed by a contracting firm, company B, which was under contract to company A. Some time after the contract between company A and company B concluded, company A filed for bankruptcy, and its intellectual property was acquired by company C, which later changed its name to company D, and was later acquired by company E. The patent now has a long chain of assignments. Over the years, the patent has undergone several continuations and divisionals without my knowledge or involvement.

Company E is now the plaintiff in a lawsuit involving the patent and wishes to file a new divisional that will include different claims. According to them, I am required to sign a new declaration due to recent changes in U.S. patent law prompted by the AIA. The new declaration is essentially identical to the original declaration, but with a new statement that the prior application was authorized by me. I'm not sure why the original declaration does not cover this. They claim that I have an obligation to assist with the filing.

What obligates me to assist company E? Does my obligation to company A via the contract with company B extend to company E? Does the original declaration of assignment to company A obligate me to assist company E? If so, why am I now required to sign a new declaration?

2 Answers 2


Your question involves to many possible answers in some of them you are bound to sign and in some you can deny signing the declaration. If you have assigned all rights of patent to organization then authorized representative can sign instead of you.

In case you have not assigned the IP rights then you can visit the amended new claims and see if they were really in your mind while filing application, or inventive subject matter was your invention.

In case your application had other co-inventor you can suggest Company E to take signature from them, its admissible in USPTO.

You can also visit http://www.uspto.gov/patent/laws-and-regulations/america-invents-act-aia/america-invents-act-aia-frequently-asked

Specifically, the inventor's declaration must state that the inventor (i) is an original inventor of the claimed invention; and (ii) authorized the filing of the patent application for the claimed invention. The inventor's declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both. It is unlikely that the declaration from the parent application contains these statements since they were not required by pre-AIA law.


But rest assured that the America Invents Act legitimately requires new declarations for continuations in situations where I hadn't previously been required to sign them. So this doesn't immediately jump out at me as a red flag or anything like that.

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .