Do You Have to Sign Your Employer's Patent Declaration?

Are You Still the Inventor If the Company Owns the Patent?

Inventorship and ownership answer different questions. Ownership says who holds the rights; inventorship says who conceived the invention. Under 35 U.S.C. § 115(a), a patent application “shall include, or be amended to include, the name of the inventor for any invention claimed in the application.” An assignment to your employer does not change that requirement, so your name belongs on the application if you invented what it claims. Whether the company owns the invention in the first place is a separate question, covered in what you still own after signing an invention assignment.

You do not need to have contributed to every claim. Under 35 U.S.C. § 116(a), joint inventors may apply together even though “each did not make a contribution to the subject matter of every claim of the patent.” The USPTO’s rule, 37 C.F.R. § 1.45(c), requires each named inventor in a nonprovisional application to have “made a contribution, individually or jointly, to the subject matter of at least one claim.”

If the company leaves you off, or names you on claims you did not invent, the error can be fixed. 35 U.S.C. § 116(c) lets the USPTO amend an application when “through error an inventor is not named,” and 35 U.S.C. § 256 provides the same correction for an issued patent, including by court order. Inventor status is part of your professional record, and it matters if your agreement pays a bonus for patents or if you later need to show what you invented and when.

What Can the Company Ask You to Sign?

When an employer or former employer files a patent application on an invention you worked on, it will usually ask for two documents.

Document	What it says	Governing law
Inventor declaration	That the application was made or authorized by you, and that you believe you are an original inventor or joint inventor of a claimed invention	35 U.S.C. § 115(b); 37 C.F.R. § 1.63
Assignment	That you transfer your rights in the invention and the application to the company	35 U.S.C. § 261; your invention agreement

Read the declaration as a statement made under penalty. Under 37 C.F.R. § 1.63(c), a person may not execute it “unless that person has reviewed and understands the contents of the application, including the claims.” Under 35 U.S.C. § 115(i), the declaration must acknowledge “that any willful false statement made in such declaration or statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.” Because the rule requires that review, ask for the application and its claims if they were not sent with the documents.

The company can combine the two documents. 35 U.S.C. § 115(e) lets an inventor “under an obligation of assignment” include the declaration statements in the assignment itself. The company can also file the application as the applicant: under 37 C.F.R. § 1.46(a), “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent,” and the rule names an “employment agreement” as evidence of that obligation.

What Should You Check Before Signing?

Before signing either document, check four things:

1. Which application it covers. The assignment should identify the specific application, not every invention you ever made.
2. Whether you invented what the claims describe. If you did not, the declaration is not yours to sign.
3. Whether the invention falls within your agreement. If you believe it falls outside the agreement or within Minnesota’s statutory exclusion, Minn. Stat. § 181.78, signing an assignment gives that position away.
4. Whether the recitals are accurate. An assignment often recites why the company owns the invention. You can ask the company to correct a recital you believe is wrong before you sign.

Read the recitals closely, because they state the company’s claim to the invention. A request Aaron Hall has handled: a company asks a former consultant or employee, sometimes years after the work ended, to sign a declaration and an assignment whose recital says the company owns the invention because of the person’s employment. The real basis, if there is one, is a specific clause in a specific contract, and whether that clause reaches the invention depends on when the idea was conceived and what work the person was doing then. Aaron’s approach in that situation is a corrected assignment that recites the actual basis, lists only the applications that clause reaches, and reserves everything else.

What Happens If You Refuse to Sign?

Declining to sign the declaration does not stop the application. Under 35 U.S.C. § 115(d)(2)(B), the applicant may file a substitute statement in place of your declaration for an individual who “is under an obligation to assign the invention but has refused to make the oath or declaration.” The USPTO’s rule, 37 C.F.R. § 1.64(a), allows a substitute statement when the inventor “has refused to execute the oath or declaration.” When a company files as the person you assigned to or are obligated to assign to, 35 U.S.C. § 118 provides that any patent on that application “shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.” You remain the named inventor either way.

Declining the assignment is a different matter, and the outcome depends on your agreement:

• If the agreement already says “hereby assign,” ownership of a covered invention may already sit with the company, and your signature on a separate assignment mainly confirms it for the record. The difference between “hereby assign” and “agree to assign” is explained in present assignment versus a promise to assign.
• If the agreement says “agree to assign,” the company can sue to compel the transfer. In United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933), the Supreme Court stated that an agreement to assign a patent not yet issued, “if valid as a contract, will be specifically enforced.”
• If the agreement has a cooperation or further-assurances clause, a refusal can itself be a breach, separate from who owns the invention. Clauses requiring you to report inventions often sit beside it; see invention disclosure requirements.

Declining makes sense when the invention is genuinely outside the agreement or protected by section 181.78, when you are not an inventor of what the claims describe, or when the document asks you to state something you believe is untrue. In those cases, put your position in writing and keep a copy. Refusing simply because the request is inconvenient, when the invention plainly falls within a valid assignment, usually creates a contract dispute you would lose. Whether the clause itself is valid is its own question; see enforceability of assignment of invention clauses.

What If You Were a Contractor?

The filing mechanics apply the same way to a consultant or independent contractor. You are still the inventor, the company may still ask for a declaration and an assignment, and a refusal still allows a substitute statement if you are obligated to assign. Whether you are obligated to assign turns on your consulting agreement’s own wording, because Minnesota’s section 181.78 addresses a provision “in an employment agreement.” For how ownership defaults differ between employees and contractors, see patents for Minnesota employers and IP ownership for Minnesota employers.

Steps Before You Sign

When you receive a patent declaration or assignment, Aaron Hall recommends this sequence:

1. Gather every agreement you signed with the company, including any section 181.78 notice.
2. Ask for a copy of the patent application and its claims.
3. Compare the claims to what you actually contributed and when you contributed it.
4. Compare the invention to the agreement’s definition and to the section 181.78 conditions.
5. Decide whether to sign as written, sign with corrected recitals, or decline in writing with your reasons.

More guides for employees and employers are in the employment law practice area.