[Federal Register Volume 77, Number 157 (Tuesday, August 14, 2012)]
[Rules and Regulations]
[Pages 48776-48826]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-17907]
[[Page 48775]]
Vol. 77
Tuesday,
No. 157
August 14, 2012
Part VI
Department of Commerce
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Patent and Trademark Office
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37 CFR Parts 1, 3, 5, et al.
Changes To Implement the Inventor's Oath or Declaration Provisions of
the Leahy-Smith America Invents Act; Final Rule
Federal Register / Vol. 77 , No. 157 / Tuesday, August 14, 2012 /
Rules and Regulations
[[Page 48776]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 3, 5, 10, and 41
[Docket No.: PTO-P-2011-0074]
RIN 0651-AC68
Changes To Implement the Inventor's Oath or Declaration
Provisions of the Leahy-Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice to implement the inventor's oath or
declaration provisions of the Leahy-Smith America Invents Act (AIA).
The AIA permits a person to whom the inventor has assigned, or is under
an obligation to assign, the invention, or who otherwise shows
sufficient proprietary interest in the matter, to make the application
for patent. The AIA also streamlines the requirements for the
inventor's oath or declaration, and permits a substitute statement in
lieu of an oath or declaration in certain circumstances. The Office is
revising the rules of practice relating to the inventor's oath or
declaration, including reissue oaths or declarations, and substitute
statements signed by a person other than an inventor, and to provide
for assignments containing oath or declaration statements.
Additionally, the Office is revising the rules of practice relating to
the inventor's oath or declaration to allow applicants to postpone
filing the inventor's oath or declaration until the application is
otherwise in condition for allowance. Finally, to better facilitate
processing of patent applications, the Office is revising and
clarifying the rules of practice for power of attorney and prosecution
of an application by an assignee.
DATES: Effective Date: The changes in this final rule take effect on
September 16, 2012.
Applicability Date: The changes to 37 CFR 1.9, 1.12, 1.14, 1.17(g),
1.27, 1.32, 1.33, 1.36, 1.41, 1.42, 1.43, 1.45, 1.46, 1.53(f) and (h),
1.55, 1.56, 1.63, 1.64, 1.66, 1.67, 1.76, 1.78, 1.81, 1.105, 1.131,
1.153, 1.162, 1.172, 1.175, 1.211, 1.215, 1.321, 1.421, 1.422, 1.424,
1.431, 1.491, 1.495(a), (c), and (h), 1.497, 3.31, 3.71, 3.73, and
41.9, and the removal of 37 CFR 1.47 and 1.432, apply only to patent
applications filed under 35 U.S.C. 111(a) or 363 on or after September
16, 2012.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((571) 272-7707),
Senior Legal Advisor; or Eugenia Jones ((571) 272-7727), Senior Legal
Advisor; or Terry J. Maciejewski ((571) 272-7730), Technical Writer-
Editor, Office of Patent Legal Administration, directly by telephone,
or by mail addressed to: Mail Stop Comments-Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of the Hiram H. Bernstein.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: Section 4 of the AIA amends the patent
laws to change the practice regarding the inventor's oath or
declaration and filing of an application by a person other than the
inventor. Section 20 of the AIA amends the patent laws to remove the
``without any deceptive intention'' provisions. This final rule revises
the rules of practice to implement these provisions of sections 4 and
20 of the AIA. The changes in sections 4 and 20 of the AIA take effect
on September 16, 2012, and apply to patent applications filed, or
proceedings commenced, on or after September 16, 2012.
Summary of Major Provisions: The Office is revising the rules of
practice to permit a person to whom the inventor has assigned or is
under an obligation to assign an invention to file and prosecute an
application for patent as the applicant, and to permit a person who
otherwise shows sufficient proprietary interest in the matter to file
and prosecute an application for patent as the applicant on behalf of
the inventor. Formerly, a person to whom the inventor had assigned an
invention could file and prosecute an application for patent, but the
inventor was considered the applicant. The Office is also revising the
rules of practice to require that juristic entities take action in a
patent application via a registered practitioner.
The Office is revising the rules of practice to eliminate a number
of former requirements pertaining to the inventor's oath or declaration
and correction of inventorship. The Office is revising the rules of
practice to permit applicants to postpone filing the inventor's oath or
declaration until the application is otherwise in condition for
allowance. The Office is revising the rules of practice to provide for
the filing of a substitute statement in lieu of an oath or declaration
by an inventor if the inventor is deceased, under legal incapacity, or
cannot be found or reached after diligent effort, or is under an
obligation to assign the invention but has refused to execute an oath
or declaration.
The Office is also revising the rules of practice to remove the
provisions which set forth ``without any deceptive intention''
requirements. The Office is further revising the rules pertaining to
reissue practice to eliminate the requirement for a supplemental
reissue oath or declaration, and to require that the inventor's oath or
declaration identify a claim that the application seeks to broaden if
the reissue application seeks to enlarge the scope of the claims of the
patent.
The Office is also revising the rules of practice to harmonize the
practice regarding foreign priority claims with the practice regarding
domestic benefit claims by requiring that both foreign priority claims
and domestic benefit claims be set forth in an application data sheet.
Costs and Benefits: This rulemaking is not economically significant
as that term is defined in Executive Order 12866 (Sept. 30, 1993).
Background: The AIA was enacted into law on September 16, 2011. See
Pub. L. 112-29, 125 Stat. 284 (2011). Section 4 of the AIA amends 35
U.S.C. 115 and 118 to change the practice regarding the inventor's oath
or declaration and filing of an application by a person other than the
inventor. See 125 Stat. at 293-94. Section 20 of the AIA amends 35
U.S.C. 116, 184, 251, and 256 (and other sections) to remove the
provisions which set forth a ``without any deceptive intention''
requirement. See 125 Stat. at 333-34. This final rule revises the rules
of practice to implement the provisions of section 4 of the AIA and to
remove the ``without any deceptive intention'' language due to the
changes to 35 U.S.C. 116, 184, 251, and 256 in section 20 of the AIA.
Section 4(a) of the AIA amends 35 U.S.C. 115 to change the
requirements for the inventor's oath or declaration as follows.
Amended 35 U.S.C. 115(a) provides that an application filed under
35 U.S.C. 111(a) or that commences the national stage under 35 U.S.C.
371 must include, or be amended to include, the name of the inventor
for any invention claimed in the application. 125 Stat. at 293. 35
U.S.C. 115(a) also provides that, except as otherwise provided in 35
U.S.C. 115, each individual who is the inventor or a joint inventor of
a claimed invention in an application must execute an oath or
declaration in connection with the application. 125 Stat. at 293-94.
Amended 35 U.S.C. 115(b) provides that an oath or declaration under
35 U.S.C. 115(a) must contain statements that the application was made
or was authorized to be made by the affiant or
[[Page 48777]]
declarant, and the individual believes himself or herself to be the
original inventor or an original joint inventor of a claimed invention
in the application. 125 Stat. at 294. There is no longer a requirement
in the statute that the inventor must state his country of citizenship
or that the inventor believes himself or herself to be the ``first''
inventor of the subject matter (process, machine, manufacture, or
composition of matter) sought to be patented.
Amended 35 U.S.C. 115(c) provides that the Director may specify
additional information relating to the inventor and to the invention
that is required to be included in an oath or declaration under 35
U.S.C. 115(a). Id.
Amended 35 U.S.C. 115(d)(1) provides that, in lieu of execution of
an oath or declaration by an inventor under 35 U.S.C. 115(a), the
applicant for patent may provide a substitute statement under the
circumstances described in 35 U.S.C. 115(d)(2), and such additional
circumstances as the Director specifies by regulation. Id. 35 U.S.C.
115(d)(2) provides that an applicant may provide a substitute statement
where an inventor is unable to file the oath or declaration under 35
U.S.C. 115(a) because the individual is deceased, under legal
incapacity, or cannot be found or reached after diligent effort, or an
individual is under an obligation to assign the invention but has
refused to make the oath or declaration required under 35 U.S.C.
115(a). Id. Therefore, while an assignee, a person under an obligation
to assign the invention (an ``obligated assignee''), or a person who
otherwise shows sufficient proprietary interest in the matter may make
an application for patent as provided for in 35 U.S.C. 118, an oath or
declaration (or an assignment containing the required statements) by
each inventor is still required, except in the circumstances set forth
in 35 U.S.C. 115(d)(2) and in any additional circumstances specified by
the Director in the regulations. The contents of a substitute statement
are set forth in 35 U.S.C. 115(d)(3). Specifically, 35 U.S.C. 115(d)(3)
provides that the substitute statement must identify the individual
with respect to whom the statement applies, set forth the circumstances
for the permitted basis for filing the substitute statement in lieu of
the oath or declaration under 35 U.S.C. 115(a), and contain any
additional information, including any showing, required by the
Director. Id.
Amended 35 U.S.C. 115(e) provides for making the statements
required under 35 U.S.C. 115(b) and (c) in an assignment of record and
specifically permits an individual who is under an obligation of
assignment of an application to include the required statements in the
assignment executed by the individual, in lieu of filing the statements
separately. Id.
Amended 35 U.S.C. 115(f) provides that a notice of allowance under
35 U.S.C. 151 may be provided to an applicant only if the applicant has
filed each required oath or declaration under 35 U.S.C. 115(a),
substitute statement under 35 U.S.C. 115(d), or recorded assignment
meeting the requirements of 35 U.S.C. 115(e). Id.
The changes to 35 U.S.C. 115 in the AIA do not affect 35 U.S.C.
111(a)(2), which continues to require that an application filed under
35 U.S.C. 111(a) include an oath or declaration as prescribed by 35
U.S.C. 115, and 35 U.S.C. 111(a)(3), which continues to permit the oath
or declaration to be submitted after the filing date of the
application, but within such period and under the conditions prescribed
by the Director, including payment of the currently charged surcharge.
See 35 U.S.C. 111(a)(2)(C) and (a)(3), and 37 CFR 1.16(f). Likewise, 35
U.S.C. 371(c) continues to require an oath or declaration complying
with the requirements of 35 U.S.C. 115 for an international application
to enter the national stage, and 35 U.S.C. 371(d) continues to require
the oath or declaration to be submitted within the period prescribed by
the Director, and with the payment of any surcharge required by the
Director, if not submitted by the date of the commencement of the
national stage. See 35 U.S.C. 371(c)(4) and (d).
Amended 35 U.S.C. 115(g)(1) provides that the requirements under 35
U.S.C. 115 shall not apply to an individual named as the inventor or a
joint inventor in an application that claims benefit under 35 U.S.C.
120, 121, or 365(c) of an earlier-filed application, if: (1) An oath or
declaration meeting the requirements of 35 U.S.C. 115(a) was executed
by the individual and was filed in connection with the earlier-filed
application; (2) a substitute statement meeting the requirements of 35
U.S.C. 115(d) was filed in connection with the earlier-filed
application with respect to the individual; or (3) an assignment
meeting the requirements of 35 U.S.C. 115(e) was executed with respect
to the earlier-filed application by the individual and was recorded in
connection with the earlier-filed application. 125 Stat. at 294-95. 35
U.S.C. 115(g)(2) provides that the Director may still require a copy of
the executed oath or declaration, the substitute statement, or the
assignment filed in connection with the earlier-filed application to be
filed in the later-filed application. Id.
Amended 35 U.S.C. 115(h)(1) provides that any person making a
statement under 35 U.S.C. 115 may withdraw, replace, or otherwise
correct the statement at any time. 35 U.S.C. 115(h)(1) also provides
that the Director shall establish regulations under which additional
statements may be filed when a change is made in the naming of the
inventor requiring the filing of one or more additional statements
under 35 U.S.C. 115. Id. 35 U.S.C. 115(h)(2) provides that if an
individual has executed an oath or declaration meeting the requirements
of 35 U.S.C. 115(a) or an assignment meeting the requirements of 35
U.S.C. 115(e), then the Director may not require that individual to
subsequently make any additional oath, declaration, or other equivalent
statement in connection with the application or any patent issuing
thereon. Id. 35 U.S.C. 115(h)(3) provides that a patent shall not be
invalid or unenforceable based upon the failure to comply with a
requirement under this section if the failure is remedied as provided
under 35 U.S.C. 115(h)(1). Id.
Amended 35 U.S.C. 115(i) provides that any declaration or statement
filed pursuant to 35 U.S.C. 115 must contain an acknowledgement that
any willful false statement made in the declaration or statement is
punishable under 18 U.S.C. 1001 by fine or imprisonment of not more
than 5 years, or both. Id. This is similar to the requirements in pre-
existing 35 U.S.C. 25 for the use of a declaration in lieu of an oath
in an Office proceeding. See 35 U.S.C. 25(b) (``Whenever such written
declaration is used, the document must warn the declarant that willful
false statements and the like are punishable by fine or imprisonment,
or both (18 U.S.C. 1001).'').
Section 4(a)(2) of the AIA amends 35 U.S.C. 121 to eliminate the
sentence that provided for the Director to dispense with signing and
execution by the inventor in a divisional application when the
divisional application is directed solely to subject matter described
and claimed in the original application as filed. Id. This amendment to
35 U.S.C. 121 is consistent with 35 U.S.C. 115(g)(1) because the
inventor named in a divisional application would not need to execute an
oath or declaration or equivalent statement for the divisional
application regardless of whether the divisional application is
directed solely to subject matter described and claimed in the original
application.
[[Page 48778]]
Section 4(a)(3) of the AIA amends 35 U.S.C. 111(a) to insert ``or
declaration'' after ``oath.'' Id.
Section 4(b)(1) of the AIA amends 35 U.S.C. 118 to change the
practice regarding the filing of an application by a person other than
the inventor. First, 35 U.S.C. 118 is amended to provide that a person
to whom the inventor has assigned, or is under an obligation to assign,
the invention may make an application for patent. 125 Stat. at 296.
Second, 35 U.S.C. 118 is amended to provide that a person who otherwise
shows sufficient proprietary interest in the matter may make an
application for patent on behalf of and as agent for the inventor on
proof of the pertinent facts and a showing that such action is
appropriate to preserve the rights of the parties. Id. Under amended 35
U.S.C. 118, the Director may continue to provide whatever notice to the
inventor that the Director considers to be sufficient. Id. 35 U.S.C.
118 is also amended to provide that if a patent is granted on an
application filed under 35 U.S.C. 118, the patent shall be granted to
the real party in interest. Id. Amended 35 U.S.C. 116 (35 U.S.C.
116(b)) continues to provide that if a joint inventor refuses to join
in an application for patent or cannot be found or reached after
diligent effort, the application may be made by the other inventor on
behalf of himself and the omitted inventor. See 35 U.S.C. 116(b).
Likewise, 35 U.S.C. 117 continues to provide that legal representatives
of deceased inventors and of those under legal incapacity may make
application for patent upon compliance with the requirements and on the
same terms and conditions applicable to the inventor. See 35 U.S.C.
117.
Section 4(b)(2) of the AIA amends 35 U.S.C. 251 to provide for the
filing of a reissue application by an assignee of the entire interest
if the application for the original patent was filed by the assignee of
the entire interest. Id.
Section 4(c) of the AIA amends 35 U.S.C. 112 to change, inter alia,
the undesignated paragraphs to subsections. Id. Section 4(d) makes
conforming amendments to 35 U.S.C. 111(b) to make reference to the
subsections of 35 U.S.C. 112. 125 Stat. at 296-97.
Section 4(e) of the AIA provides that the amendments made by
Section 4 shall take effect on, and shall apply to any patent
application filed on or after, September 16, 2012. 125 Stat. at 297.
Section 20 of the AIA amends 35 U.S.C. 116, 184, 251, and 256 to
eliminate ``without any deceptive intention'' clauses from each portion
of the statute. 125 Stat. at 333-34. Section 20 of the AIA provides
that its amendments shall take effect on, and shall apply to
proceedings commenced on or after September 16, 2012. 125 Stat. at 335.
This change should not be taken as an endorsement for applicants and
inventors to act with ``deceptive intention'' in proceedings before the
Office. As discussed previously, 35 U.S.C. 115(i) requires that any
declaration or statement filed pursuant to 35 U.S.C. 115 must contain
an acknowledgement that any willful false statement made in the
declaration or statement is punishable under 18 U.S.C. 1001 by fine or
imprisonment of not more than five (5) years, or both.
General Discussion Regarding Implementation: The Office proposed
changes and requested comments on the changes to the rules of practice
to implement section 4 of the AIA in a notice of proposed rulemaking
published in January 2012. See Changes to Implement the Inventor's Oath
or Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR
982-1003 (Jan. 6, 2012) (notice of proposed rulemaking). The public
submitted a number of comments suggesting that the Office take a more
robust approach to implementing the changes in section 4 of the AIA,
rather than shoehorn those provisions into existing Office practices.
In this final rule, the Office is making a number of changes to the
implementation of section 4 of the AIA in view of the input from the
public.
Changes Concerning Who May Apply for a Patent (the Applicant): The
Office took the position in the notice of proposed rulemaking that the
change to 35 U.S.C. 118 did not permit the assignee to be the applicant
except in the situations enumerated in 35 U.S.C. 115(d)(2). See Changes
to Implement the Inventor's Oath or Declaration Provisions of the
Leahy-Smith America Invents Act, 77 FR at 983. The public submitted a
number of comments suggesting that the changes to 35 U.S.C. 118 permit
an assignee or an obligated assignee to be the applicant even in
situations other than those enumerated in 35 U.S.C. 115(d)(2). The
Office has revised the position taken in the notice of proposed
rulemaking based on the public comments, and is now taking the position
that the changes to 35 U.S.C. 115 and 118 permit an assignee to file an
application for patent as the applicant.
35 U.S.C. 118, as amended by the AIA, permits (but does not
require) a person to whom the inventor has assigned (assignee) or is
under an obligation to assign (obligated assignee) the invention to
make the application for patent. That section also permits a person who
otherwise shows sufficient proprietary interest in the matter to make
an application for patent on behalf of, and as agent for, the inventor.
The legislative history of the AIA makes clear that the change to 35
U.S.C. 118 is designed to: (1) Make it easier for an assignee to file a
patent application; (2) allow obligated assignees (entities to which
the inventor is obligated to assign the application) to file
applications; and (3) allow a person who has a sufficient proprietary
interest in the invention to file an application to preserve that
person's rights and those of the inventor. See H.R. Rep. 112-98, at 44
(2011). 35 U.S.C. 115, as amended by the AIA, still requires each
inventor to execute an oath or declaration, except in the limited
circumstances specified in 35 U.S.C. 115(d), even if the application
has been filed by the assignee or an obligated assignee.
Traditionally, being the applicant (or the person who may ``make
the application'') under 35 U.S.C. chapter 11 has been synonymous with
being the person who must execute the oath or declaration under 35
U.S.C. 115. However, 35 U.S.C. 115, as amended by the AIA, separates
the applicant from the person who must execute the oath or declaration
under 35 U.S.C. 115. Therefore, the Office now reads 35 U.S.C. 116,
117, and 118 in view of the public comment to specify the circumstances
under which a person other than the inventor may be the applicant, but
35 U.S.C. 115 defines who must execute the oath or declaration that is
required by 35 U.S.C. 115.
As the AIA distinguishes between the ``applicant'' and the person
who must execute the oath or declaration under 35 U.S.C. 115, the
Office is separating the regulations pertaining to being the applicant
from the regulations pertaining to execution of the inventor's oath or
declaration. Specifically, the regulations pertaining to being the
applicant are as follows: (1) 37 CFR 1.41 pertains to inventorship; (2)
37 CFR 1.42 pertains to the applicant for patent (which may be the
inventor or may be the assignee); (3) 37 CFR 1.43 pertains to
applications by the legal representative of a deceased or legally
incapacitated inventor; (4) 37 CFR 1.45 pertains to joint inventors and
applications by remaining joint inventors; and (5) 37 CFR 1.46 pertains
to applications by the assignee, obligated assignee, or person who
otherwise shows sufficient proprietary interest in the matter, or to
applications in which the assignee has taken over prosecution to the
exclusion of the inventor. The regulations pertaining to
[[Page 48779]]
the inventor's oath or declaration are as follows: (1) 37 CFR 1.63
pertains to an inventor's oath or declaration under 35 U.S.C. 115(a) or
an assignment under 35 U.S.C. 115(e) that contains the statements
required in an inventor's oath or declaration by the inventor or a
joint inventor; and (2) 37 CFR 1.64 pertains to a substitute statement
under 35 U.S.C. 115(d) if the inventor is deceased, is legally
incapacitated, cannot be found or reached after a diligent effort was
made, or has refused to execute the oath or declaration.
To further clarify the rules, and because of the statutory change
from an inventor-applicant system to an assignee-applicant system, the
Office explains the terms ``applicant'' and ``assignee'' as now used in
the rules of practice. The term ``applicant'' means the inventor (all
joint inventors collectively) if there is no assignee, or if the
assignee has opted not to file (make) the application for patent and
not to take over prosecution to the exclusion of the inventor. The term
``applicant'' means the assignee (or obligated assignee or person who
otherwise shows sufficient proprietary interest in the matter) if the
assignee (or obligated assignee or person who otherwise shows
sufficient proprietary interest in the matter) has filed the
application for patent, or if the assignee has taken over prosecution
of the application to the exclusion of the inventor. The term
``assignee'' means the assignee of the entire right, title and interest
in the application regardless of whether the assignee filed the
application for patent or has taken over prosecution of the application
to the exclusion of the inventor.
Under 35 U.S.C. 118, as amended, provides that where the Director
grants a patent on an application filed under 35 U.S.C. 118 by a person
other than the inventor, the Office must grant the patent to the real
party in interest. Therefore, the Office is requiring applicants other
than the inventor to notify the Office of any change in the real party
in interest in a reply to a notice of allowance. Absent any such
notification, the Office will presume no change has occurred and will
grant the patent to the real party in interest of record.
The Office plans to continue to use the inventor's name for
application and patent identification purposes as inventor names tend
to provide a more distinct identification than assignee names.
Changes to Oath or Declaration Practice: The Office proposed in the
notice of proposed rulemaking to require that an oath or declaration
include the names of all inventors, as well as the ``reviewed and
understands'' and ``duty to disclose'' clauses formerly required by 37
CFR 1.63(b)(2) and (b)(3). See Changes to Implement the Inventor's Oath
or Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR
at 1000. The public submitted a number of comments suggesting that the
Office should not require that an oath or declaration name all of the
inventors or require any statements other than those required by 35
U.S.C. 115(b).
The Office is, in this final rule, streamlining a number of oath or
declaration requirements (vis-a-vis both the proposed and former
requirements) based upon the public comments. First, the Office is
revising 37 CFR 1.63 to state that an inventor's oath or declaration
need not indicate the name of each inventor if the applicant provides
an application data sheet indicating the legal name, residence, and
mailing address of each inventor. Second, the Office is revising 37 CFR
1.63 to eliminate the requirement that an inventor's oath or
declaration state that the person executing the oath or declaration has
reviewed and understands the contents of the application, and
acknowledges the duty to disclose to the Office all information known
to the person to be material to patentability as defined in 37 CFR
1.56. 37 CFR 1.63 will simply state that a person may not execute an
oath or declaration for an application unless that person has reviewed
and understands the contents of the application, and is aware of the
duty to disclose to the Office all information known to the person to
be material to patentability as defined in 37 CFR 1.56. Third, the
Office is revising 37 CFR 1.63 to eliminate the requirements that any
declaration under 35 U.S.C. 115 contain an acknowledgement that willful
false statements may jeopardize the validity of the application or any
patent issuing thereon, and that all statements made of the declarant's
own knowledge are true and that all statements made on information and
belief are believed to be true. Finally, since 35 U.S.C. 115 no longer
contains a requirement that the inventor identify his country of
citizenship, the Office will no longer require this information in the
oath or declaration.
As revised by the AIA, 35 U.S.C. 115 (entitled ``Inventor's oath or
declaration'') provides for an oath or declaration (35 U.S.C. 115(a)),
substitute statement (35 U.S.C. 115(d)), and an assignment-statement
(35 U.S.C. 115(e)), and any substitute statement or assignment-
statement must contain a willful false statements clause pursuant to 35
U.S.C. 115(i). The requirement for the willful false statements clause
has the effect of making a substitute statement under 35 U.S.C. 115(d)
or an assignment-statement under 35 U.S.C. 115(e) properly denominated
as a ``declaration.'' See previous discussion of 35 U.S.C. 115(i).
Consistent with these statutory provisions, and the provisions of 35
U.S.C. 111(a) and 371(c) which require that an application contain an
``oath or declaration'' as prescribed by 35 U.S.C. 115 (see 35 U.S.C.
111(a)(2)(C) and 371(c)(4)), the Office is employing the phrase
``inventor's oath or declaration'' in the rules of practice to mean an
oath or declaration as provided for in 35 U.S.C. 115(a), a substitute
statement as provided for in 35 U.S.C. 115(d), or an assignment-
statement as provided for in 35 U.S.C. 115(e).
Specifically, when the rules reference ``an inventor's oath or
declaration,'' it means an oath or declaration under 35 U.S.C. 115(a),
substitute statement under 35 U.S.C. 115(d), or assignment-statement
under 35 U.S.C. 115(e) executed by or with respect to an individual
(whether the inventor or a joint inventor) for an application. The
phrase ``the inventor's oath or declaration'' means the oaths or
declarations under 35 U.S.C. 115(a), substitute statements under 35
U.S.C. 115(d), or assignment-statements under 35 U.S.C. 115(e) executed
by the inventive entity. With respect to an application naming more
than one inventor, any reference to ``the inventor's oath or
declaration'' means the oaths, declarations, or substitute statements
that have been collectively executed by or with respect to all of the
joint inventors, unless otherwise clear from the context.
The Office proposed in the notice of proposed rulemaking to
continue the practice of requiring the inventor's oath or declaration
before examination. See Changes to Implement the Inventor's Oath or
Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR at
984-85. The public submitted a number of comments suggesting that the
Office should not require the inventor's oath or declaration before an
application is in condition for allowance. Based upon the public
comments, the Office is providing in this final rule that applicants
may postpone filing the inventor's oath or declaration until the
application is otherwise in condition for allowance if the applicant
provides an application data sheet before examination indicating the
name, residence, and mailing address of each inventor. The Office will
continue the
[[Page 48780]]
practice permitted by 35 U.S.C. 111(a)(3) of requiring a surcharge
(currently $130) to recover the cost of the special processing and
additional notices for original (non-reissue) applications that are not
complete on filing. If the applicant, however, provides a signed
application data sheet providing the name, residence, and mailing
address of each inventor, the Office will not require an additional fee
beyond the surcharge simply to postpone filing the inventor's oath or
declaration until the application is otherwise in condition for
allowance.
The Office indicated in the notice of proposed rulemaking that the
Office needs to know who the inventors are prior to examination and
that postponing the requirement for the inventor's oath or declaration
until allowance would add to overall patent pendency. See Changes to
Implement the Inventor's Oath or Declaration Provisions of the Leahy-
Smith America Invents Act, 77 FR at 984. The Office is proposing in a
separate rulemaking an additional fee of $1,000 ($500 for a small
entity, and $250 for a micro entity) for a request to correct
inventorship in an application after the first Office action on the
merits to encourage reasonable diligence and a bona fide effort in
ascertaining the actual inventorship and providing that information to
the Office prior to examination. The Office is also considering
proposing (in a separate rulemaking) changes to the patent term
adjustments provisions of 37 CFR 1.704 (defining the circumstances that
constitute a failure of the applicant to engage in reasonable efforts
to conclude processing or examination of an application, and which
result in a reduction of patent term adjustment) to ensure that
applicants who delay the issuance of a notice of allowance under 35
U.S.C. 151 do not gain patent term adjustment as a consequence of their
delay.
Applicants entering the national stage under 35 U.S.C. 371 from an
international application under the Patent Cooperation Treaty (PCT)
must be mindful of the patent term adjustment consequences of this
course of action. The Office is changing its rules to provide that a
PCT international application enters the national stage when the
applicant files the fee required by 35 U.S.C. 371(c)(1) (the national
fee provided in 35 U.S.C. 41(a)), and the documents required by 35
U.S.C. 371(c)(2) (a copy of the international application (unless not
required under 35 U.S.C. 371(a) or already communicated by the
International Bureau), and a translation into the English language of
the international application, if it was filed in another language))
within the period set in 37 CFR 1.495. The fourteen-month time frame in
35 U.S.C. 154(b)(1)(A)(i)(II) for issuing an Office action under 35
U.S.C. 132 or notice of allowance under 35 U.S.C. 151 is measured from
``the date on which an international application fulfilled the
requirements of section 371,'' which includes the filing of the
inventor's oath or declaration. See 35 U.S.C. 371(c)(4). This process
is discussed in detail in the Manual of Patent Examining Procedure
(MPEP). See MPEP Sec. 1893.03(b) (8th ed. 2001) (Rev. 8, July 2010).
Changes Pertaining to Substitute Statements: In the notice of
proposed rulemaking, the Office proposed to require a petition with
showings and a fee for applicants executing a substitute statement in
lieu of an oath or declaration as required by former 37 CFR 1.47. See
Changes to Implement the Inventor's Oath or Declaration Provisions of
the Leahy-Smith America Invents Act, 77 FR at 988-89, and 999. The
public submitted a number of comments suggesting that the Office should
not require proof or showings from applicants executing a substitute
statement in lieu of an oath or declaration. The Office is in this
final rule streamlining a number of proposed substitute statement
requirements (vis-a-vis both the proposed and former requirements of 37
CFR 1.47) based upon the public comments. For an assignee or obligated
assignee filing the application as the applicant, the final rule
provides that the documentary evidence of ownership (e.g., assignment
for an assignee, employment agreement for an obligated assignee) should
be recorded as provided for in 37 CFR part 3 no later than the date the
issue fee is paid in the application. For a person who otherwise shows
sufficient proprietary interest in the matter to file the application
as the applicant, the final rule provides that the showing of
proprietary interest must be filed in the application, the fee set
forth in 37 CFR 1.17(g) paid, and a petition granted before the person
who has shown sufficient proprietary interest in the matter will be
considered the applicant. The fee for persons who otherwise show
sufficient proprietary interest in the matter is to recover the cost of
the special processing and Official Gazette notice required for
applications that are filed and prosecuted on behalf of the nonsigning
inventor by a person who is not the assignee or obligated assignee.
The Office will also provide that an assignee, an obligated
assignee, or a person who otherwise shows sufficient proprietary
interest in the matter who is the applicant may execute a substitute
statement in lieu of an oath or declaration if the applicant
identifies: (1) The circumstances permitting the person to execute the
substitute statement in lieu of an oath or declaration (e.g., whether
the nonsigning inventor cannot be reached after a diligent effort was
made, or has refused to execute the oath or declaration); (2) the
person executing the substitute statement with respect to the
nonsigning inventor and the relationship of such person to the
nonsigning inventor; and (3) the last known address of the nonsigning
inventor.
Changes Pertaining to Reissue Practice: Consistent with the
amendments made to 35 U.S.C. 115 and 251, the Office is revising
reissue practice (vis-a-vis the former requirements) to: (1) Delete the
requirement for a reissue inventor's oath or declaration to include a
statement that all errors arose without any deceptive intent on the
part of the applicant; (2) eliminate the requirement for a supplemental
inventor's oath or declaration; (3) require the inventor's oath or
declaration for a reissue application to identify a claim that the
application seeks to broaden if the reissue application seeks to
enlarge the scope of the claims of the patent (a basis for the reissue
is the patentee claiming less than the patentee had the right to claim
in the patent); and (4) clarify that a single claim containing both a
broadening and a narrowing of the claimed invention is to be treated as
a broadening. These changes will provide for more efficient processing
of reissue applications and improve the quality of patents, in
accordance with the intent of the AIA. In order to implement the
conforming amendment made to 35 U.S.C. 251 in section 4(b)(2) of the
AIA, the Office is also revising the rules to permit an assignee of the
entire interest who filed an application under 35 U.S.C. 118 that was
patented to sign the inventor's oath or declaration in a reissue
application of such patent (even if the reissue application is a
broadening reissue).
Miscellaneous Changes: The Office, under the authority provided by
35 U.S.C. 2(b)(2), is also revising the rules of practice for power of
attorney, prosecution of an application by an assignee, and foreign
priority and domestic benefit claims to facilitate prosecution of
applications and improve the quality of patents. Juristic entities
(organizations) who seek to prosecute an application, including taking
over prosecution of an application, will need
[[Page 48781]]
to do so via a registered practitioner. The Office's experience is that
the vast majority of juristic entities act via a registered
practitioner, but a small number attempt to prosecute applications
``pro se.''
Other changes (vis-a-vis the former regulations) include: (1)
Streamlining correction of inventorship, correction of an inventor's
name, and changes in the order of the names of joint inventors; (2)
providing for the carryover of a power of attorney in continuing
applications, where no inventors are being added in the continuing
application; (3) permitting practitioners who have acted only in a
representative capacity in an application to change the correspondence
address after a patent has issued; (4) accepting the signature of a
practitioner of record on a statement under 37 CFR 3.73(c) on behalf of
an assignee without requiring further evidence of the practitioner's
authority to act on behalf of the assignee; (5) providing a procedure
for handling conflicts between different purported assignees attempting
to control prosecution; and (6) harmonizing the practice regarding
foreign priority claims with the practice regarding domestic benefit
claims by requiring both types of claims to be set forth in an
application data sheet.
Changes for consistency with section 4(c) of the AIA (amending 35
U.S.C. 112 to change, inter alia, the undesignated paragraphs to
subsections) will be made in a separate rulemaking that implements
miscellaneous post patent provisions of the AIA.
Discussion of Specific Rules
The following is a discussion of the amendments to Title 37 of the
Code of Federal Regulations, parts 1, 3, 5, 10, and 41 that are
implemented in this final rule:
37 CFR Part 1
Section 1.1: Section 1.1(e) is amended to update the mail stop
designation for communications relating to patent term extensions under
35 U.S.C. 156 to make it consistent with the Office's list of mail
stops. Mail stops assist the Office in routing correspondence to the
office or area assigned with treating it. Use of mail stops is not
required but is strongly recommended, even where the documents are
submitted via the Office's electronic filing system-Web (EFS-Web). A
mail stop designation can help the Office more quickly identify the
type of document if the applicant did not select the correct document
code when uploading a document through EFS-Web. For this reason, use of
mail stops is encouraged.
Applicants are reminded that initial requests for patent term
extension may not be submitted via EFS-Web and must be filed in paper.
These initial requests are handled differently by Office personnel than
other types of official patent correspondence. Therefore, the use of a
mail stop will help ensure that initial requests are properly
recognized and processed in a timely manner.
Section 1.4: Section 1.4(e)(2) provides that a payment by credit
card that is not being made via the Office's electronic filing systems
(e.g., EFS-Web, the Electronic Patent Assignment System (EPAS), or the
Finance On-line Shopping Web page for patent maintenance fees), may
only be submitted with an original handwritten signature personally
signed in permanent dark ink or its equivalent by that person. This
change will avoid possible controversies regarding use of an S-
signature (Sec. 1.4(d)(2)) instead of a handwritten signature (Sec.
1.4(d)(1)) for credit card payments, e.g., a request for refund where
there is a change of purpose by the applicant and the request is based
on use of an S-signature rather than a handwritten signature. An S-
signature includes any signature made by electrical or mechanical
means, and any other mode of making or applying a signature not covered
by a handwritten signature. See Sec. 1.4(d)(2). Section 1.4(e)(1)
contains the language of former Sec. 1.4(e).
An original handwritten signature is required only when the credit
card payment is being made in paper and thus the Office's Card Payment
Form, PTO-2038, or an equivalent, is being used. A submission via the
Central Facsimile Number is considered a paper submission and requires
an original handwritten signature. Applicants are reminded that neither
Form PTO-2038 nor an equivalent should be filed via EFS-Web.
Section 1.5: Section 1.5(a) is amended to indicate that letters
directed to the Office concerning applications for patent should state
the name of the first listed inventor, rather than the name of the
applicant. As discussed previously, the Office plans to continue to use
the inventor's name for application and patent identification purposes
as inventor names tend to provide a more distinct identification than
assignee name.
Section 1.9: Section 1.9(a) is amended to indicate that the terms
``national application'' and ``nonprovisional application'' as used in
37 CFR chapter I with respect to international applications filed under
the PCT refer to an international application filed under the PCT in
which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid.
Section 1.9(b) is amended to indicate that the term ``international
application'' as used in 37 CFR chapter I refers to an international
application for patent filed under the PCT prior to entering national
processing at the Designated Office stage. This change is being made to
avoid the situation in which a PCT ``international application'' that
is pending as to the U.S. is neither an international application
(because national processing at the Designated Office stage has begun)
nor a nonprovisional application (because the application has not yet
entered the national stage under Sec. 1.491). The use of the terms
``national application'' and ``nonprovisional application'' for such
applications will identify the stage at which the application currently
resides.
Section 1.12: Sections 1.12(b) and (c) are amended to indicate that
a request for access to assignment records of an application maintained
in confidence under 35 U.S.C. 122(a) must include written authority of
an inventor, the applicant, the assignee or an assignee of an undivided
part interest, or a patent practitioner of record, unless by petition
having the requisite showing. This change is for consistency with the
change in practice concerning who is the applicant for patent in Sec.
1.42.
Section 1.14: Section 1.14(c) is amended to indicate that a request
to access an application maintained in confidence under 35 U.S.C.
122(a) must be signed by: (1) The applicant; (2) a patent practitioner
of record; (3) the assignee or an assignee of an undivided part
interest; (4) the inventor or a joint inventor; or (5) a registered
attorney or agent named in the papers accompanying the application
papers filed under Sec. 1.53 or the national stage documents filed
under Sec. 1.495, if a power of attorney has not been appointed under
Sec. 1.32. This change is for consistency with the change in practice
concerning who is the applicant for patent in Sec. 1.42.
Section 1.14(f) is amended to limit publication of notice in the
Official Gazette of an application filed by someone other than the
inventor to the filing of an application on behalf of an inventor by a
person who otherwise shows sufficient propriety interest in the matter.
Section 1.16: Section 1.16(f) is amended to refer to ``the
inventor's oath or declaration'' rather than ``oath or declaration.''
This change to Sec. 1.16(f), as well as the use of ``the inventor's
oath or declaration'' in other rules, e.g., Sec. Sec. 1.17(i),
1.51(b)(2), 1.52(b) and (c), 1.53, 1.77(a)(6), 1.136(c)(1), 1.153(b),
[[Page 48782]]
1.154(a)(6), 1.162, and 1.163(b)(6), 1.175, 1.492(h), and
1.495(c)(1)(ii), is for consistency with the use of the phrase ``the
inventor's oath or declaration'' to denote: (1) the oath or declaration
under 35 U.S.C. 115(a), substitute statement under 35 U.S.C. 115(d), or
assignment-statement under 35 U.S.C. 115(e) executed by or with respect
to the inventor for an application naming only one inventor; and (2)
the oaths or declarations under 35 U.S.C. 115(a), substitute statements
under 35 U.S.C. 115(d), or assignment-statements under 35 U.S.C. 115(e)
that collectively have been executed by or with respect to all of the
joint inventors for an application naming joint inventors.
Section 1.17: Section 1.17(g) is amended to refer to the filing of
an application on behalf of an inventor by a person who otherwise shows
sufficient proprietary interest in the matter under Sec. 1.46, rather
than the filing of an application by other than all the inventors or by
a person not the inventor under former Sec. 1.47. This change is for
consistency with the changes to applicant practice in Sec. Sec. 1.42,
1.43, 1.45, and 1.46. Thus, an assignee or obligated assignee will no
longer be required to file a petition and fee to be considered the
applicant or to execute a substitute statement (in lieu of an oath or
declaration) with respect to a nonsigning inventor.
Section 1.17(i) is amended to refer to supplying the name or names
of the inventor or inventors in an application without either an
application data sheet or an inventor's oath or declaration (rather
than just without an oath or declaration as prescribed by Sec. 1.63).
This change is for consistency with the changes to practice for naming
the inventors in Sec. 1.41.
Section 1.27: Section 1.27(c)(2) is amended to indicate that a
written assertion of small entity status can be signed by: (1) The
applicant (Sec. 1.42 or Sec. 1.421); (2) a patent practitioner of
record or a practitioner acting in a representative capacity under
Sec. 1.34; (3) the inventor or a joint inventor, if the inventor is
the applicant; or (4) the assignee. This change is for consistency with
the change in practice concerning who is the applicant for patent in
Sec. 1.42. This change also results in any written assertion being
signed by or on behalf of the real party in interest, rather than by a
party who no longer has a financial interest in the application.
Section 1.31: Section 1.31 is amended to provide that an applicant
for patent may file and prosecute the applicant's own case, or the
applicant may give power of attorney so as to be represented by one or
more patent practitioners or joint inventors, except that a juristic
entity (e.g., organizational assignee) must be represented by a patent
practitioner even if the juristic entity is the applicant. This change
is for consistency with the change in practice concerning who is the
applicant for patent in Sec. 1.42. Thus, all papers submitted on
behalf of a juristic entity must be signed by a patent practitioner
unless otherwise specified, Sec. 1.33(b)(3). Juristic entities include
corporations (MPEP Sec. 409.03(b)) or other non-human entities created
by law and given certain legal rights. This change is because juristic
entities have been attempting to prosecute patent applications before
the Office pro se and requesting additional assistance from examiners.
Juristic entities attempting to prosecute patent applications before
the Office pro se also make more procedural errors that result in
delays in prosecution. Accordingly, this change will facilitate a
reduction in the Office's backlog and pendency by reducing prosecution
delays caused by procedural errors.
Section 1.31 also provides that the Office cannot aid in the
selection of a patent practitioner.
Section 1.32: Section 1.32(a)(2) is amended to provide that the
term ``power of attorney'' means a written document by which a
principal authorizes one or more patent practitioners or joint
inventors to act on the principal's behalf. Section 1.32(a)(3) is
amended to provide that the term ``principal'' means the applicant
(Sec. 1.42) for an application for patent and the patent owner for a
patent, including a patent in a supplemental examination or
reexamination proceeding, and that the principal executes a power of
attorney designating one or more patent practitioners or joint
inventors to act on the principal's behalf. Section 1.32(a)(4) is
amended to provide that the term ``revocation'' means the cancellation
by the principal of the authority previously given to a patent
practitioner or joint inventor to act on the principal's behalf.
Section 1.32(a)(6) is added to provide that the term ``patent
practitioner of record'' means a patent practitioner who has been
granted a power of attorney in an application, patent, or other
proceeding in compliance with Sec. 1.32(b), and that the terms
``practitioner of record'' and ``attorney or agent of record'' also
mean a patent practitioner who has been granted a power of attorney in
an application, patent, or other proceeding in compliance with Sec.
1.32(b). These changes are for consistency with the change in practice
concerning the applicant for patent in Sec. 1.42.
Section 1.32(b) is amended to provide that a power of attorney
must: (1) Be in writing; (2) name one or more representatives in
compliance with Sec. 1.32(c); (3) give the representative power to act
on behalf of the principal; and (4) be signed by the applicant for
patent (Sec. 1.42) or the patent owner. This provision also applies in
reissue applications, supplemental examination proceedings, and
reexamination proceedings. These changes are for consistency with the
change in practice concerning who is the applicant for patent in Sec.
1.42.
Section 1.32(b)(4) provides that a patent owner who was not the
applicant under Sec. 1.46 must appoint any power of attorney in
compliance with Sec. Sec. 3.71 and 3.73. This covers a patent owner in
a reissue application who was not the applicant under Sec. 1.46 in the
application for the original patent, as well as a patent owner in a
supplemental examination or reexamination proceeding who was not the
applicant under Sec. 1.46.
Section 1.32(d) is added to provide that a power of attorney from a
prior national application for which benefit is claimed under 35 U.S.C.
120, 121, or 365(c) in a continuing application may have effect in the
continuing application if a copy of the power of attorney from the
prior application is filed in the continuing application unless: (1)
The power of attorney was granted by the inventor; and (2) the
continuing application names an inventor who was not named as an
inventor in the prior application. Former Sec. 1.63(d)(4) provided
that, when filing continuation and divisional applications and
including a copy of a declaration from the parent application,
applicants should ``identify'' in the continuation or divisional any
change in power of attorney that occurred after the filing of the
parent application. The requirement in former Sec. 1.63(d)(4) to
``identify'' the change in power of attorney has been interpreted
differently by applicants, with varying success of the Office
recognizing the change in power of attorney. Attempts to comply have
included: filing a copy of the power of attorney from the parent,
filing a copy of only the notice of acceptance of power of attorney,
and making a statement about the power of attorney in a transmittal
letter that accompanied the continuation or divisional application.
Sometimes applicants did not accurately identify the change in power of
attorney (e.g., the power of attorney document in the parent
application appointed specific practitioners by name and registration
number, but the papers filed in the continuation or
[[Page 48783]]
divisional application directed the Office to recognize the
practitioners associated with a customer number as having power of
attorney). Specifically requiring a copy of the power of attorney in
the continuing application in all situations (even where a change in
power did not occur in the prior application) will make the record
clear with respect to who has power of attorney.
The Office does not recommend that practitioners use a combined
declaration and power of attorney document, and no longer provides a
combined declaration and power of attorney form on its Internet Web
site. The power of attorney should be from the assignee where one
exists. Otherwise, the assignee may be paying the bill, while the
inventor is providing the power of attorney, thereby possibly raising
an issue as to who is the practitioner's client. Additionally,
relationships between an assignee and the inventors may deteriorate. It
is not uncommon in these situations for inventors to stop cooperating
and in some cases file powers of attorney in an attempt to control
prosecution of the application.
Section 1.32(e) is added to provide that if the power of attorney
was granted by the originally named inventive entity and an added
inventor pursuant to Sec. 1.48 does not provide a power of attorney
consistent with the power of attorney granted by the originally named
inventive entity, the addition of the inventor results in the loss of
that power of attorney upon grant of the Sec. 1.48 request. This
provision does not preclude a practitioner from acting pursuant to
Sec. 1.34, if applicable.
Section 1.33: Section 1.33(a) is amended to specify that if an
applicant provides more than one correspondence address (in a single
paper or in different papers), the Office will select one of the
specified addresses for use as the correspondence address and, if
given, may select the correspondence address associated with a Customer
Number over a typed correspondence address. This change pertains to the
problem that arises when applicants provide multiple correspondence
addresses in a single paper (e.g., providing both a typed
correspondence address and a Customer Number in a single paper) or
multiple papers (e.g., an oath or declaration, a transmittal letter,
and a preliminary amendment that each includes a different
correspondence address), and the Office inadvertently does not select
the correspondence address actually desired by applicant. The Office
may then need to re-mail papers to the desired address. This change
does not affect the hierarchy provided in Sec. 1.76(d) for
inconsistencies between an application data sheet and other documents.
This change is designed to encourage applicants to review their
submissions carefully to ensure that the Office receives clear
instructions regarding the correspondence address.
Section 1.33(a) also provides that the correspondence address may
be changed by the parties set forth in Sec. 1.33(b)(1) (a patent
practitioner of record) or Sec. 1.33(b)(3) (the applicant under Sec.
1.42)). Section 1.33(a) also provides that prior to the appointment of
any power of attorney under Sec. 1.32(b), the correspondence address
may also be changed by any patent practitioner named in the application
transmittal papers who acts in a representative capacity under the
provisions of Sec. 1.34. Section 1.33(a) no longer discusses the
filing of an oath or declaration under Sec. 1.63 as the Office is
revising the rules to allow applicants to postpone filing the
inventor's oath or declaration until the application is otherwise in
condition for allowance.
Sections 1.33(b)(1) and (2) are amended to provide that amendments
and other papers, except for written assertions pursuant to Sec.
1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed
by: (1) A patent practitioner of record; (2) a patent practitioner not
of record who acts in a representative capacity under the provisions of
Sec. 1.34; or (3) the applicant (Sec. 1.42). Section 1.33(b)(3) also
provides that unless otherwise specified (e.g., terminal disclaimers
and Sec. 3.73(c) statements), all papers submitted on behalf of a
juristic entity must be signed by a patent practitioner, as Sec. 1.31
provides that a juristic entity may prosecute a patent application only
through a patent practitioner.
Section 1.33(f) is added to replace former Sec. 1.63(d)(4) with
respect to the correspondence address. Where application papers (e.g.,
the inventor's oath or declaration) from a prior application are used
in a continuing application and the correspondence address was changed
during the prosecution of the prior application, an application data
sheet or separate paper identifying the correspondence address to be
used for the continuing application must be submitted. Otherwise, the
Office may not recognize the change of correspondence address effected
during the prosecution of the prior application. Historically, some
applicants would file continuing applications with copies of papers
from the prior application that include correspondence addresses to
former law firms or correspondence addresses that are no longer
current. This change will facilitate the processing of patent
applications by the Office by making it easier to determine the correct
correspondence address and reduce the number of instances where the
Office mails correspondence to an incorrect address.
Section 1.33(g) is added to provide that a practitioner acting in a
representative capacity whose correspondence address is the
correspondence address of record in an application may change the
correspondence address after the patent has issued, provided that the
change of correspondence address is accompanied by a statement that
notice has been given to the patentee or owner. Section 1.33(g)
provides a means for practitioners acting in a representative capacity
in an application to effect a change in correspondence address after
the patent has granted but would not provide authority to a
practitioner acting under Sec. 1.34 to change the correspondence
address in an application. See Sec. 1.33(a).
Practitioners that file and prosecute an application in a
representative capacity, pursuant to Sec. 1.34, usually provide their
business address as the correspondence address of record. Once the
patent issues, practitioners have attempted to withdraw as attorney or
agent by filing a petition, and also attempt to change the
correspondence address to direct correspondence to the patentee's or
owner's address. Such attempts have not been successful as the rules
did not permit the correspondence address to be changed by a
practitioner acting in a representative capacity, nor would the Office
grant withdrawal where a practitioner is not of record. See Change in
Procedure for Requests to Withdraw from Representation In a Patent
Application, 1329 Off. Gaz. Pat. Office 99 (Apr. 8, 2008). There have
been instances where practitioners acting in a representative capacity
have indicated that they have repeatedly requested that the client
change the correspondence address, but the client has refused to submit
the change of correspondence address to the Office. Section 1.33(g)
will permit practitioners to change the correspondence address after a
patent has issued where practitioners have provided notice to the
patentees or owners.
Section 1.36: Section 1.36(a) is amended to change ``by an
applicant for patent (Sec. 1.41(b)) or an assignee of the entire
interest of the applicant, or the owner of the entire interest of a
patent'' to ``by the applicant or patent owner.'' An assignee
conducting prosecution of a national patent application does so as
[[Page 48784]]
the applicant (note that all papers submitted on behalf of a juristic
entity must be signed by a patent practitioner). Thus, there is no need
to refer separately to the applicant and an assignee of the entire
interest of the applicant. This change is for consistency with the
change in practice concerning the applicant for patent in Sec. 1.42.
In addition, the patent owner is the owner of the entire interest of a
patent. Section 1.36(a) is also amended to change the parenthetical
``or fewer than all of the assignees of the entire interest of the
applicant or, in a reexamination proceeding, fewer than all the owners
of the entire interest of a patent'' in the third sentence to ``or
fewer than all patent owners in a supplemental examination or
reexamination proceeding.'' Section 1.36(a) is also amended to change
the phrase ``but the assignee of the entire interest of the applicant
may revoke previous powers of attorney and give another power of
attorney of the assignee's own selection as provided in Sec. 1.32(b)''
in the ultimate sentence to ``but the assignee may become the applicant
under Sec. 1.46(c) and revoke any previous power of attorney and grant
a power of attorney as provided in Sec. 1.32(b).''
Section 1.41: Section 1.41(a) provides that an application must
include, or be amended to include, the name of the inventor for any
invention claimed in the application (the inventorship). See 35 U.S.C.
115(a). As discussed previously, the ``applicant'' is provided for in
Sec. 1.42.
Section 1.41(b) provides that the applicant may name the
inventorship of a nonprovisional application under 35 U.S.C. 111(a) in
the application data sheet in accordance with Sec. 1.76 or the
inventor's oath or declaration. Section 1.41(b) specifically provides
that the inventorship of a nonprovisional application under 35 U.S.C.
111(a) is the inventor or joint inventors set forth in the application
data sheet in accordance with Sec. 1.76 filed before or concurrently
with the inventor's oath or declaration. An application data sheet must
be signed (Sec. 1.76(e)) to comply with Sec. 1.76. An unsigned
application data sheet is treated as only an application transmittal
letter. See Sec. 1.76(e). Section 1.41(b) also provides that if an
application data sheet is not filed before or concurrently with the
inventor's oath or declaration, the inventorship is the inventor or
joint inventors set forth in the inventor's oath or declaration, except
as provided for in Sec. Sec. 1.53(d)(4) (continued prosecution
applications) and 1.63(d) (continuing applications). Section 1.41(b)
also provides that once an application data sheet or the inventor's
oath or declaration is filed in a nonprovisional application, any
correction of inventorship must be pursuant to Sec. 1.48. Section
1.41(b) finally provides that if neither an application data sheet nor
the inventor's oath or declaration is filed during the pendency of a
nonprovisional application, the inventorship is the inventor or joint
inventors set forth in the application papers filed pursuant to Sec.
1.53(b), unless the applicant files a paper, including the processing
fee set forth in Sec. 1.17(i), supplying the name or names of the
inventor or joint inventors.
Applicants who wish to take advantage of the ability to name the
inventors in an application data sheet rather than the inventor's oath
or declaration should take care to ensure that an application data
sheet under Sec. 1.76 that is signed in compliance with Sec. 1.33(b)
is present on filing, or at least is filed prior to the filing of any
inventor's oath or declaration in the application. If an inventor's
oath or declaration is filed in the application prior to the filing of
an application data sheet under Sec. 1.76 that is signed in compliance
with Sec. 1.33(b), the inventorship named in the inventor's oath or
declaration controls. For example, if an inventor's oath or declaration
naming only inventor ``A'' is present on filing without an accompanying
application data sheet, and a signed application data sheet naming
inventors ``A'' and ``B'' is subsequently filed in the application, the
application will be treated as naming only inventor ``A'' (the inventor
provided in the inventor's oath or declaration) until the inventorship
is corrected under Sec. 1.48(a).
Section 1.41(c) provides that the inventorship of a provisional
application is the inventor or joint inventors set forth in the cover
sheet as prescribed by Sec. 1.51(c)(1). Section 1.41(c) also provides
that once a cover sheet as prescribed by Sec. 1.51(c)(1) is filed in a
provisional application, any correction of inventorship must be
pursuant to Sec. 1.48. Section 1.41(c) finally provides that if a
cover sheet as prescribed by Sec. 1.51(c)(1) is not filed during the
pendency of a provisional application, the inventorship is the inventor
or joint inventors set forth in the application papers filed pursuant
to Sec. 1.53(c), unless the applicant files a paper including the
processing fee set forth in Sec. 1.17(q), supplying the name or names
of the inventor or joint inventors.
Section 1.41(d) provides that in either a nonprovisional
application under 35 U.S.C. 111(a) filed without an application data
sheet or the inventor's oath or declaration, or in a provisional
application filed without a cover sheet as prescribed by Sec.
1.51(c)(1), the name and residence of each person believed to be an
actual inventor should be provided when the application papers pursuant
to Sec. 1.53(b) or Sec. 1.53(c) are filed.
Section 1.41(e) provides that the inventorship of an international
application entering the national stage under 35 U.S.C. 371 is the
inventor or joint inventors set forth in the application data sheet in
accordance with Sec. 1.76 filed with the initial submission under 35
U.S.C. 371. Thus, the applicant in an international application may
change inventorship as to the U.S. at the time of national stage entry
by simply filing an application data sheet in accordance with Sec.
1.76 with the initial submission under 35 U.S.C. 371 naming the
inventor or joint inventors. Section 1.41(e) also provides that unless
the initial submission under 35 U.S.C. 371 is accompanied by an
application data sheet in accordance with Sec. 1.76 setting forth the
inventor or joint inventors, the inventorship is the inventor or joint
inventors set forth in the international application, which includes
any change effected under PCT Rule 92bis. Section 1.41(e) does not
provide the ability to name the inventors or joint inventors via the
inventor's oath or declaration even when an application data sheet in
accordance with Sec. 1.76 is not provided.
Section 1.42: Section 1.42 defines who is the applicant for a
patent.
Section 1.42(a) provides that the word ``applicant'' when used in
this title refers to the inventor or all joint inventors, or to the
person applying for a patent as provided in Sec. Sec. 1.43, 1.45, or
1.46.
Section 1.42(b) provides that if a person is applying for a patent
as provided in Sec. 1.46, the word ``applicant'' refers to the
assignee, the person to whom the inventor is under an obligation to
assign the invention, or the person who otherwise shows sufficient
proprietary interest in the matter, who is applying for a patent under
Sec. 1.46 and not the inventor. Section 1.46 (discussed subsequently)
implements 35 U.S.C. 118 and provides that a person to whom the
inventor has assigned or is under an obligation to assign the invention
may make an application for patent, and that a person who otherwise
shows sufficient proprietary interest in the matter may make an
application for patent on behalf of and as agent for the inventor on
proof of the pertinent facts and a showing that such action is
appropriate to preserve the rights of the parties.
[[Page 48785]]
Section 1.42(c) provides that if fewer than all joint inventors are
applying for a patent as provided in Sec. 1.45, the phrase ``the
applicant'' means the joint inventors who are applying for the patent
without the omitted inventor(s).
Section 1.42(d) provides that any person having authority may
deliver an application and fees to the Office on behalf of the
applicant. However, an oath or declaration, or substitute statement in
lieu of an oath or declaration, may be executed only in accordance with
Sec. 1.63 or 1.64, a correspondence address may be provided only in
accordance with Sec. 1.33(a), and amendments and other papers must be
signed in accordance with Sec. 1.33(b).
Section 1.42(e) provides that the Office may require additional
information where there is a question concerning ownership or interest
in an application, and a showing may be required from the person filing
the application that the filing was authorized where such authorization
comes into question.
Section 1.43: Section 1.43 provides that if an inventor is deceased
or under legal incapacity, the legal representative of the inventor may
make an application for patent on behalf of the inventor; and that if
an inventor dies during the time intervening between the filing of the
application and the granting of a patent thereon, the letters patent
may be issued to the legal representative upon proper intervention. See
35 U.S.C. 117 (``[l]egal representatives of deceased inventors and of
those under legal incapacity may make application for patent upon
compliance with the requirements and on the same terms and conditions
applicable to the inventor''). Section 1.43 refers to Sec. 1.64
concerning the execution of a substitute statement by a legal
representative in lieu of an oath or declaration.
Section 1.45: Section 1.45 pertains to an application for patent by
joint inventors. Section 1.45(a) provides that joint inventors must
apply for a patent jointly, and that each joint inventor must make the
inventor's oath or declaration required by Sec. 1.63, except as
provided for in Sec. 1.64. See 35 U.S.C. 116(a) (``[w]hen an invention
is made by two or more persons jointly, they shall apply for patent
jointly and each make the required oath, except as otherwise provided
in this title.''). Section 1.45(a) also provides that if a joint
inventor refuses to join in an application for patent or cannot be
found or reached after diligent effort, the other joint inventor or
inventors may make the application for patent on behalf of themselves
and the omitted inventor. See 35 U.S.C. 116(b) (``[i]f a joint inventor
refuses to join in an application for patent or cannot be found or
reached after diligent effort, the application may be made by the other
inventor on behalf of himself and the omitted inventor.''). Section
1.45(a) also cross-references Sec. 1.64 concerning the execution of a
substitute statement by the other joint inventor or inventors in lieu
of an oath or declaration.
Sections 1.45(b) and (c) contain the provisions of pre-existing
Sec. Sec. 1.45(b) and (c).
Section 1.46: Section 1.46 is amended to provide for the filing of
an application for patent by an assignee, a person to whom the inventor
is under an obligation to assign the invention, or a person who
otherwise shows sufficient proprietary interest in the matter under 35
U.S.C. 118. Section 1.46(a) provides that a person to whom the inventor
has assigned or is under an obligation to assign an invention may make
an application for patent. Section 1.46(a) also provides that a person
who otherwise shows sufficient proprietary interest in the matter may
make an application for patent on behalf of and as agent for the
inventor on proof of the pertinent facts and a showing that such action
is appropriate to preserve the rights of the parties. The ability for a
person who otherwise shows sufficient proprietary interest in the
matter was previously set forth in former Sec. 1.47(b), which
restricted such ability to situations in which all of the inventors
refused to execute the application, or could not be found or reached
after diligent effort.
Section 1.46(b) provides that if an application under 35 U.S.C. 111
is made by a person other than the inventor under Sec. 1.46(a), the
application must contain an application data sheet under Sec. 1.76
specifying in the applicant information section (Sec. 1.76(b)(7)) the
assignee, the person to whom the inventor is under an obligation to
assign the invention, or the person who otherwise shows sufficient
proprietary interest in the matter. Section 1.46(b) further provides
that if the application is the national stage of an international
application, the person who is identified in the international stage as
an applicant for the United States is the person specified as the
original applicant for the national stage. While identifying the party
making the application for patent (the applicant) in an application
data sheet is not a filing date requirement, a delay in naming the
applicant under Sec. 1.46 in an application data sheet may cause it to
appear that the applicant is the inventor and thus requiring the party
to proceed under Sec. Sec. 3.71 and 3.73 to become the applicant.
Section 1.46(b)(1) provides that if the applicant is the assignee
or person to whom the inventor is under an obligation to assign an
invention, the documentary evidence of ownership (e.g., assignment for
an assignee, employment agreement for an obligated assignee) should be
recorded as provided for in 37 CFR part 3 no later than the date the
issue fee is paid in the application. Section 1.46(b)(2) provides that
if the applicant is a person who otherwise shows sufficient proprietary
interest in the matter, such applicant must submit a petition
including: (1) The fee set forth in Sec. 1.17(g); (2) a showing that
such person has sufficient proprietary interest in the matter; and (3)
a statement that making the application for patent by a person who
otherwise shows sufficient proprietary interest on behalf of and as
agent for the inventor is appropriate to preserve the rights of the
parties. A discussion of the evidence necessary for a showing that a
person has sufficient proprietary interest in the matter is set forth
in MPEP Sec. 409.03(f).
Section 1.46(c) provides that any request to correct or update the
name of the applicant after an applicant has been specified under Sec.
1.46(b) must include an application data sheet under Sec. 1.76
specifying the correct or updated name of the applicant in the
applicant information section (Sec. 1.76(b)(7)). Thus, if there is no
change in the applicant itself but just the applicant's name (due to a
correction or name change), the applicant need only submit an
application data sheet specifying the correct or updated name of the
applicant in the applicant information section (Sec. 1.76(b)(7)).
Section 1.46(c) also provides that any request to change the applicant
after an original applicant has been specified under Sec. 1.46(b) must
include an application data sheet under Sec. 1.76 specifying the
applicant in the applicant information section (Sec. 1.76(b)(7)) and
must comply with Sec. Sec. 3.71 and 3.73. Thus, if there is a change
of applicant under Sec. 1.46(b) (either from the inventor to the
assignee, or from one assignee to another assignee), the new applicant
must establish its ownership of the application under Sec. Sec.
3.71(b) and 3.73.
Section 1.46(d) provides that even if the whole or a part interest
in the invention or in the patent to be issued is assigned or obligated
to be assigned, an oath or declaration must be executed by the actual
inventor or each actual joint inventor, except as provided for in Sec.
1.64. This provision is similar to the provisions of former Sec. 1.46.
Section 1.46
[[Page 48786]]
also refers to Sec. 1.64 concerning the execution of a substitute
statement by an assignee, person to whom the inventor is under an
obligation to assign the invention, or a person who otherwise shows
sufficient proprietary interest in the matter.
Section 1.46(e) provides that if a patent is granted on an
application filed under Sec. 1.46 by a person other than the inventor,
the patent shall be granted to the real party in interest (e.g., the
current assignee for an application that has been assigned). Otherwise,
the patent may be issued to the assignee or jointly to the inventor and
the assignee as provided in Sec. 3.81.
Section 1.46(e) also provides that where a real party in interest
has filed an application under Sec. 1.46, the applicant shall notify
the Office of any change in the real party in interest no later than
payment of the issue fee, and that the Office will treat the absence of
such a notice as an indication that there has been no change in the
real party in interest. This provision implements the requirement of 35
U.S.C. 118 that: ``[i]f the Director grants a patent on an application
filed under this section by a person other than the inventor, the
patent shall be granted to the real party in interest and upon such
notice to the inventor as the Director considers to be sufficient.''
Section 3.81 provides that an ``application may issue in the name of
the assignee * * * where a request for such issuance is submitted with
payment of the issue fee.'' This is accomplished by providing the
assignee information in box 3 of the Part B--Fee(s) Transmittal form,
PTOL-85B. The use of box 3 will be required where the real party in
interest has changed from filing of the application and the application
was filed pursuant to Sec. 1.46.
Section 1.46(f) provides that the Office may publish notice of the
filing of the application by a person who otherwise shows sufficient
proprietary interest in the Official Gazette.
Section 1.47: Section 1.47 is removed and reserved. As discussed
previously, execution of a substitute statement in lieu of an oath or
declaration is now provided for in Sec. 1.64.
Section 1.48: Section 1.48 is amended to no longer include a
``without deceptive intention'' requirement as this requirement has
been eliminated from 35 U.S.C. 116 in section 20 of the AIA. Section
1.48 is also amended to no longer require the written consent of any
assignee as the Office does not require express written consent by an
assignee to other amendments to an application.
Section 1.48(a) provides for correction of inventorship in a
nonprovisional application filed either under 35 U.S.C. 111(a) or
resulting from an international application in which the basic national
fee under 35 U.S.C. 41(a)(1)(F) has been paid. Section 1.48(a) provides
that any request to correct or change the inventorship once the
inventorship has been established under Sec. 1.41 must include: (1) An
application data sheet in accordance with Sec. 1.76 that identifies
each inventor by his or her legal name; and (2) the processing fee set
forth in Sec. 1.17(i). Due to the streamlining of the requirements for
correction of inventorship, it is no longer necessary to have separate
provisions based upon whether the correction is necessitated by the
original inventorship being in error or by an amendment to the claims.
Section 1.48(b) also provides that an oath or declaration as
required by Sec. 1.63, or a substitute statement in compliance with
Sec. 1.64, will be required for any actual inventor who has not yet
executed such an oath or declaration.
Section 1.48(c) is currently reserved.
Section 1.48(d) provides for correction of inventorship in a
provisional application filed under 35 U.S.C. 111(b). Section 1.48(d)
provides that once a cover sheet as prescribed by Sec. 1.51(c)(1) is
filed in a provisional application, any request to correct or change
the inventorship must include: (1) a request, signed by a party set
forth in Sec. 1.33(b), to correct the inventorship that identifies
each inventor by his or her legal name; and (2) the processing fee set
forth in Sec. 1.17(q).
Section 1.48(e) provides that the Office may require such other
information as may be deemed appropriate under the particular
circumstances surrounding the correction of inventorship.
Section 1.48(f) provides for corrections to the name of the
inventor or a joint inventor, or the order of the names of joint
inventors. Due to the streamlining of the requirements for correction
of inventorship, it is no longer necessary to have distinct procedures
for correction of inventorship and for correction to the name of an
inventor or to the order of the names of the inventors. Corrections to
the name of an inventor or to the order of the names of the inventors
were formerly provided for as exception processes, such as under Sec.
1.182. See MPEP Sec. Sec. 605.04(b), (c), and (f). Section 1.48(f)
specifically provides that any request to correct or update the name of
the inventor or a joint inventor, or the order of the names of joint
inventors, in a nonprovisional application must include: (1) An
application data sheet in accordance with Sec. 1.76 that identifies
each inventor by his or her legal name in the desired order; and (2)
the processing fee set forth in Sec. 1.17(i).
Section 1.48(g) provides that the provisions of Sec. 1.48 do not
apply to reissue applications. Section 1.48(g) also refers to
Sec. Sec. 1.171 and 1.175 for correction of inventorship in a patent
via a reissue application.
Section 1.48(h) provides a cross reference to Sec. 1.324 for
correction of inventorship in a patent.
Section 1.48(i) provides for correction of inventorship in an
interference or contested case before the Patent Trial and Appeal
Board. Section 1.48(i) provides that in an interference under part 41,
subpart D, of this title, a request for correction of inventorship in
an application must be in the form of a motion under Sec. 41.121(a)(2)
of this title. Section 1.48(i) also provides that in a contested case
under part 42, subpart D, of this title, a request for correction of
inventorship in an application must be in the form of a motion under
Sec. 42.22 of this title. Section 1.48(i) finally provides that the
motion under Sec. Sec. 41.121(a)(2) or 42.22 of this title must comply
with the requirements of Sec. 1.48(a).
Section 1.51: Section 1.51(b)(2) is amended to refer to ``the
inventor's oath or declaration'' and to cross-reference Sec. Sec. 1.63
and 1.64. See previous discussion of Sec. 1.16(f).
Section 1.52: Section 1.52(b) and (c) are amended to refer to ``the
inventor's oath or declaration.'' See previous discussion of Sec.
1.16(f).
Section 1.52(b) is amended to also refer to supplemental
examination proceedings.
Section 1.52(c) is amended to provide that interlineation, erasure,
cancellation, or other alteration of the application papers may be made
before or after the signing of the inventor's oath or declaration
referring to those application papers, provided that the statements in
the inventor's oath or declaration remain applicable to those
application papers. Thus, Sec. 1.52(c) no longer prohibits changes
after execution of the inventor's oath or declaration. Section 1.52(c)
also provides that a substitute specification (Sec. 1.125) may be
required if the application papers do not comply with paragraphs (a)
and (b) of this section.
Section 1.52(d) is amended to be limited to nonprovisional or
provisional applications filed under 35 U.S.C. 111(a) and (b),
respectively.
Section 1.53: Section 1.53 is amended to change the phrase ``oath
or declaration'' to the phrase ``the inventor's oath or declaration''
throughout. See previous discussion of Sec. 1.16(f).
[[Page 48787]]
Section 1.53(c) is also amended to replace ``the first paragraph of
35 U.S.C. 112'' with ``35 U.S.C. 112(a)'' for consistency with the
change to 35 U.S.C. 112 in the AIA.
Section 1.53(c)(3) is also amended to replace ``the second
paragraph of 35 U.S.C. 112'' with ``35 U.S.C. 112(b)'' for consistency
with the change to 35 U.S.C. 112 in the AIA.
Section 1.53(f) is amended to revise the missing parts practice to
allow applicants to postpone filing the inventor's oath or declaration
until the application is otherwise in condition for allowance.
Section 1.53(f)(1) provides for a notice (if the applicant has
provided a correspondence address) if the application does not contain
the basic filing fee, the search fee, or the examination fee, or if the
application under Sec. 1.53(b) does not contain the inventor's oath or
declaration. Section 1.53(f)(1) provides that applicant must pay the
basic filing fee, search fee, and examination fee, and pay the
surcharge if required by Sec. 1.16(f) within the time period set in
the notice to avoid abandonment. Section 1.53(f)(3) (discussed
subsequently) sets forth the time period for filing the inventor's oath
or declaration in an application under Sec. 1.53(b) (an application
under Sec. 1.53(d) uses the inventor's oath or declaration from the
prior application) and provides the conditions under which an applicant
may postpone filing the inventor's oath or declaration until the
application is otherwise in condition for allowance.
Section 1.53(f)(2) provides for the situation where applicant has
not provided a correspondence address in an application under Sec.
1.53(b), and the application does not contain the basic filing fee, the
search fee, or the examination fee, or does not contain the inventor's
oath or declaration. Section 1.53(f)(2) provides that if the applicant
has not provided a correspondence address, the applicant must pay the
basic filing fee, search fee, and examination fee, and pay the
surcharge if required by Sec. 1.16(f), within two months from the
filing date of the application to avoid abandonment. As discussed
previously, Sec. 1.53(f)(3) (discussed subsequently) sets forth the
time period for filing the inventor's oath or declaration in an
application under Sec. 1.53(b) and provides the conditions under which
an applicant may postpone filing the inventor's oath or declaration
until the application is otherwise in condition for allowance.
Section 1.53(f)(3) sets forth the time period for filing the
inventor's oath or declaration in an application under Sec. 1.53(b)
and provides the conditions under which an applicant may postpone
filing the inventor's oath or declaration until the application is
otherwise in condition for allowance. Section 1.53(f)(3) specifically
provides that the inventor's oath or declaration in an application
under Sec. 1.53(b) must also be filed within the period specified in
Sec. 1.53(f)(1) or (f)(2), except that the filing of the inventor's
oath or declaration may be postponed until the application is otherwise
in condition for allowance under the conditions specified in Sec.
1.53(f)(3)(i) through (f)(3)(ii). Section 1.53(f)(3)(i) provides that
the application must be an original (non-reissue) application that
contains an application data sheet in accordance with Sec. 1.76
identifying: (1) each inventor by his or her legal name; and (2) a
mailing address where the inventor customarily receives mail, and
residence, if an inventor lives at a location which is different from
where the inventor customarily receives mail, for each inventor.
Section 1.53(f)(3)(ii) provides that the applicant must file an oath or
declaration in compliance with Sec. 1.63, or substitute statement in
compliance with Sec. 1.64, executed by or with respect to each actual
inventor no later than the expiration of the time period set in the
``Notice of Allowability'' to avoid abandonment, when the applicant is
notified in a ``Notice of Allowability'' that an application is
otherwise in condition for allowance. The time period set in a ``Notice
of Allowability'' is not extendable. See Sec. 1.136(c). The Office may
dispense with the notice provided for in Sec. 1.53(f)(1) if an oath or
declaration under Sec. 1.63, or substitute statement under Sec. 1.64,
executed by or with respect to each actual inventor has been filed
before the application is in condition for allowance.
Under former practice, the Office issued a Notice to File Missing
Parts if an application under Sec. 1.53(b) did not contain the basic
filing fee, the search fee, or the examination fee, or the inventor's
oath or declaration. If the Office issued a Notice to File Missing
Parts, the applicant was given a time period (usually two months)
within which to file the missing basic filing fee, the search fee, the
examination fee, or the inventor's oath or declaration and pay the
surcharge required by Sec. 1.16(f) to avoid abandonment. See MPEP
Sec. 601.01(a). The Office is modifying this process such that if an
application under Sec. 1.53(b) contains the applicable filing fees
(basic filing fee, search fee, the examination fee, any applicable
excess claims fee, and any applicable application size fee), the
surcharge required by Sec. 1.16(f), and a signed application data
sheet providing the information required by Sec. 1.53(f)(3)(i), but
does not include the inventor's oath or declaration, the Office will
not issue a Notice to File Missing Parts requiring the applicant to
file the inventor's oath or declaration. If an application under Sec.
1.53(b) that does not contain the inventor's oath or declaration also
does not contain the applicable filing fees, or the surcharge required
by Sec. 1.16(f), or a signed application data sheet providing the
information required by Sec. 1.53(f)(3)(i), the Office will issue a
Notice to File Missing Parts giving the applicant a time period
(usually two months) within which to file the missing filing fees, the
surcharge required by Sec. 1.16(f), or signed application data sheet
providing the information required by Sec. 1.53(f)(3)(i) (or the
inventor's oath or declaration) to avoid abandonment. In either
situation, the inventor's oath or declaration will not be required
within the period for reply to the Notice to File Missing Parts if the
applicant provides a signed application data sheet providing the
information required by Sec. 1.53(f)(3)(i) within the period for reply
to the Notice to File Missing Parts. The filing fees and surcharge
required by Sec. 1.16(f), however, must be filed within the period for
reply to the Notice to File Missing Parts to avoid abandonment.
If an application is in condition for allowance and includes an
oath or declaration in compliance with Sec. 1.63, or substitute
statement in compliance with Sec. 1.64, executed by or with respect to
each actual inventor, the Office will issue a ``Notice of
Allowability'' (PTOL-37) and a ``Notice of Allowance and Fee(s) Due''
(PTOL-85). If an application is in condition for allowance but does not
include an oath or declaration in compliance with Sec. 1.63, or a
substitute statement in compliance with Sec. 1.64, executed by or with
respect to each actual inventor, the Office will issue a ``Notice of
Allowability'' (PTOL-37) (but not a ``Notice of Allowance and Fee(s)
Due'' (PTOL-85)) giving the applicant three months to file an oath or
declaration in compliance with Sec. 1.63, or substitute statement in
compliance with Sec. 1.64, executed by or with respect to each actual
inventor, to avoid abandonment. This three-month time period is not
extendable under Sec. 1.136(a). The ``Notice of Allowance and Fee(s)
Due'' (PTOL-85)) will not be issued until the application includes an
oath or declaration in compliance with Sec. 1.63, or substitute
statement in compliance
[[Page 48788]]
with Sec. 1.64, executed by or with respect to each actual inventor.
Section 1.53(f)(4) contains the provisions of former Sec.
1.53(f)(3).
Section 1.53(f)(5) contains the provisions of former Sec.
1.53(f)(4).
Section 1.53(f)(6) contains the provisions of former Sec.
1.53(f)(5).
Section 1.53(h) is amended to provide an exception for the
situation in which the inventor's oath or declaration is not filed
until the application is otherwise in condition for allowance under
Sec. 1.53(f)(3).
Section 1.55: Sections 1.55(a)(1)(i), (c), and (d)(1)(ii) are
amended to require a foreign priority claim be identified in an
application data sheet (Sec. 1.76). 35 U.S.C. 119(b) does not specify
the particular location in the application for setting forth a claim to
the benefit of a prior foreign application. Additionally, Sec. 1.55
formerly did not specify where in the application a foreign priority
claim must be, but former Sec. 1.63(c) required that the foreign
priority claim be in an application data sheet or identified in the
oath or declaration. The change to Sec. 1.55 in this final rule
establishes a single location for the foreign priority claim in the
application data sheet, which would facilitate application processing
by providing practitioners with a clear location for the foreign
priority claim, and the Office with one location to locate the foreign
priority claim quickly. Formerly, the Office had to look at the
specification, amendments to the specification, the oath or
declaration, the application data sheet (if provided), and elsewhere to
determine the priority claim. In addition, when applicants provided
inconsistent information relating to the claim for foreign priority,
the Office had to then determine which priority claim governed.
Additionally, providing this information in a single location will
facilitate review of patents and patent application publications,
because applications frequently set forth a benefit and/or foreign
priority claim in the first sentence(s) of the specification, which is
superseded by an application data sheet that includes a different
benefit or foreign priority claim, and thus the benefit claim and/or
foreign priority information contained on the front page of the patent
or patent application publication is different from the benefit claim
and/or foreign priority claim included in the first sentence(s) of the
specification. While the benefit and/or foreign priority claim on the
front page of the patent or patent application publication is usually
correct, anyone (including an examiner, a practitioner or the public)
reviewing the patent or patent application publication must review the
file history of the application to be certain of its correctness. Since
most applications are filed with an application data sheet, requiring
the benefit and/or foreign priority claims to be included in the
application data sheet will not require most practitioners to change
their practice.
35 U.S.C. 119(b) provides that the foreign application is
identified by specifying the application number, country or
intellectual property authority, and filing date of each foreign
application for which priority is claimed. Section 1.55(a)(1) and (c)
thus provide that the foreign priority claim must identify the foreign
application for which priority is claimed by specifying the application
number, country (or intellectual property authority), day, month, and
year of its filing. In addition, Sec. 1.55(a)(1)(i) requires
identification of any foreign application having a filing date before
that of the application for which priority is claimed by specifying the
application number, country (or intellectual property authority), day,
month, and year of its filing. Providing this information in the
application data sheet constitutes the claim for foreign priority as
required by 35 U.S.C. 119(b) and Sec. 1.55(a).
Section 1.56: Section 1.56(c)(3) is amended to indicate that its
provisions also apply to every other person who is substantively
involved in the preparation or prosecution of the application and who
is associated with the inventor, the applicant, an assignee, or anyone
to whom there is an obligation to assign the application. This change
is for consistency with the change in practice concerning who is the
applicant for patent in Sec. 1.42.
Section 1.59: Section 1.59(a)(2) is amended to refer to any
preliminary amendment present on the filing date of the application in
the parenthetical for consistency with Sec. 1.115(a)(1).
Section 1.63: Section 1.63(a) provides that the inventor, or each
individual who is a joint inventor of a claimed invention, in an
application for patent must execute an oath or declaration directed to
the application, except as provided for in Sec. 1.64. See 35 U.S.C.
115(a). Section 1.63(a) further provides that an oath or declaration
must: (1) Identify the inventor or joint inventor exeuting the oath or
declaration by his or her legal name; (2) identify the application to
which it is directed; (3) include a statement that the person executing
the oath or declaration believes the named inventor or joint inventor
to be the original inventor or an original joint inventor of a claimed
invention in the application for which the oath or declaration is being
submitted; and (4) state that the application was made or was
authorized to be made by the person executing the oath or declaration.
The requirements that an oath or declaration include a statement that
the person executing the oath or declaration believes the named
inventor or joint inventor to be the original inventor or an original
joint inventor of a claimed invention in the application for which the
oath or declaration is being submitted, and state that the application
was made or was authorized to be made by the person executing the oath
or declaration are requirements of 35 U.S.C. 115(a) and (b). The
requirements that an oath or declaration must identify the inventor or
joint inventor executing the oath or declaration by his or her legal
name and identify the application to which it is directed are necessary
for the Office to ensure that there is compliance with the requirement
of 35 U.S.C. 115(a) that each individual who is the inventor or a joint
inventor of a claimed invention in an application for patent has
executed an oath or declaration in connection with the application
(except as provided in 35 U.S.C. 115).
Section 1.63(a)(1) simplifies the requirement for the inventor's
name to be his or her legal name without reference to a family or given
name. The requirement for the inventor's legal name is sufficient,
given that individuals do not always have both a family name and a
given name, or have varying understandings of what a ``given'' name
requires.
Section 1.63(a)(2) contains the language of former Sec. 1.63(b)(1)
(requiring identification of the application to which the oath or
declaration is directed).
Section 1.63(a)(3) no longer includes a requirement for identifying
the country of citizenship for each inventor, as this information is no
longer required by 35 U.S.C. 115.
Section 1.63(a)(4) no longer includes the requirement that the
person executing the oath or declaration state that he or she is
believed to be the ``first'' inventor, as this statement is no longer
provided for by 35 U.S.C 115(b)(2) and would not be consistent with a
first inventor to file system. Section 1.63(a)(4) does include a
requirement from 35 U.S.C. 115(b)(1), not present in former 35 U.S.C.
115 or Sec. 1.63, that the oath or declaration state that the
application was made or was authorized to be made by the person
executing the oath or declaration.
Section 1.63(b) provides that unless such information is supplied
in an
[[Page 48789]]
application data sheet in accordance with Sec. 1.76, the oath or
declaration must also identify: (1) each inventor by his or her legal
name; and (2) a mailing address where the inventor customarily receives
mail, and (3) residence, if an inventor lives at a location which is
different from where the inventor customarily receives mail, for each
inventor. Therefore, the applicant is not required to name each
inventor in a single oath or declaration as long as the inventorship is
provided in an application data sheet in accordance with Sec. 1.76.
This will permit each joint inventor to execute an oath or declaration
stating only that the joint inventor executing the oath or declaration
is an original joint inventor of the claimed invention in the
application for which the oath or declaration is being submitted. The
phrase ``application data sheet in accordance with Sec. 1.76''
requires that the application data sheet be signed in compliance with
Sec. 1.33(b). An unsigned application data sheet will be treated only
as a transmittal letter.
The requirement for identification of a mailing address is
clarified by noting that it is the address where the inventor
``customarily receives mail,'' which may encompass an address where the
inventor works, a post office box, or other address where mail is
received even if it is not the main mailing address of the inventor.
The mailing address is for the benefit of the inventor in the event
that the Office would need to contact the inventor directly.
Section 1.63 is also amended to eliminate the requirement for
identifying the claim for foreign priority under Sec. 1.55 in the oath
or declaration. This change reflects the Office's desire to have claims
for foreign priority under Sec. 1.55 and claims for domestic benefit
under Sec. 1.78 be presented in an application data sheet (Sec.
1.76). The former requirement that the domestic claim for benefit be
placed in the first sentence(s) of the specification or an application
data sheet (Sec. 1.76), while requiring that a foreign priority claim
be identified in an oath or declaration or application data sheet, has
led to confusion by applicants as to the proper placement of these
priority or benefit claims and to Office processing issues of such
claims. As section 3 of the AIA placed foreign priority claims on equal
footing with domestic benefit claims in regard to what may be relied
upon as a prior art date, it is important that there be one unified
place that the Office and the public rely upon in determining these
claims. Accordingly, Sec. Sec. 1.55 and 1.78 are amended to provide a
unified way (the application data sheet) to present the claims that
will lead to a more reliable placement of the claims in a printed
patent or a patent application publication.
Section 1.63(c) provides that a person may not execute an oath or
declaration for an application unless that person has reviewed and
understands the contents of the application, including the claims, and
is aware of the duty to disclose to the Office all information known to
the person to be material to patentability as defined in Sec. 1.56.
Thus, an oath or declaration under Sec. 1.63 is no longer required to
contain the ``reviewed and understands'' clause and ``duty to
disclose'' clause of former Sec. 1.63(b)(2) and (b)(3). However, Sec.
1.63 still requires that a person executing an oath or declaration for
an application review and understand the contents of the application,
and be aware of the duty of disclosure under Sec. 1.56. Section
1.63(c) also provides that there is no minimum age for a person to be
qualified to execute an oath or declaration, but the person must be
competent to execute, i.e., understand, the document that the person is
executing. This provision contains the language of former Sec.
1.63(a)(1).
Section 1.63(d) implements the provisions of 35 U.S.C. 115(g).
Section 1.63(d)(1) provides that a newly executed oath or declaration
under Sec. 1.63, or substitute statement under Sec. 1.64, is not
required under Sec. 1.51(b)(2) and Sec. 1.53(f) or Sec. 1.497 for an
inventor in a continuing application that claims the benefit under 35
U.S.C. 120, 121, or 365(c) in compliance with Sec. 1.78 of an earlier-
filed application, provided that an oath or declaration in compliance
with Sec. 1.63, or substitute statement under Sec. 1.64, was executed
by or with respect to such inventor and was filed in the earlier-filed
application, and a copy of such oath, declaration, or substitute
statement showing the signature or an indication thereon that it was
executed, is submitted in the continuing application. Section
1.63(d)(2) provides that the inventorship of a continuing application
filed under 35 U.S.C. 111(a) is the inventor or joint inventors
specified in the application data sheet filed before or concurrently
with the copy of the inventor's oath or declaration from the earlier-
filed application. If an application data sheet is not filed before or
concurrently with the copy of the inventor's oath or declaration from
the earlier-filed application, the inventorship is the inventorship set
forth in the copy of the inventor's oath or declaration from the
earlier-filed application, unless the copy of the inventor's oath or
declaration is accompanied by a statement signed pursuant to Sec.
1.33(b) stating the name of each inventor in the continuing
application. Section 1.63(d)(3) provides that any new joint inventor
named in the continuing application must provide an oath or declaration
in compliance with Sec. 1.63, except as provided for in Sec. 1.64.
Section 1.63(e) implements the provisions of 35 U.S.C. 115(e).
Section 1.63(e)(1) provides that an assignment may also serve as an
oath or declaration required by Sec. 1.63 if the assignment: (1)
includes the information and statements required under Sec. 1.63(a)
and (b); and (2) a copy of the assignment is recorded as provided for
in 37 CFR part 3. The assignment, including the information and
statements required under Sec. 1.63(a) and (b), must be executed by
the individual who is under the obligation of assignment. Section
1.63(e)(2) provides that any reference to an oath or declaration under
Sec. 1.63 includes an assignment as provided for in Sec. 1.63(e).
Applicants should be mindful of the change to Sec. 3.31 requiring
a conspicuous indication, such as by use of a check-box on the
assignment cover sheet, to alert the Office that an assignment
submitted with an application is submitted for a dual purpose:
recording in the assignment database, such as to support a power of
attorney, and for use in the application as the oath or declaration.
Assignments cannot be recorded unless an application number is provided
against which the assignment is to be recorded. When an assignment is
submitted for recording along with a paper application, the assignment
is separated from the paper application and forwarded to the Assignment
Recordation Branch for recording in its database at the time where the
application is assigned an application number. The assignment does not
become part of the application file. If the applicant indicates that an
assignment-statement is also an oath or declaration, the Office will
scan the assignment into the Image File Wrapper (IFW) file for the
application before forwarding it to the Assignment Recordation Branch.
Failure to utilize the check-box will result in a Notice to File
Missing Parts of Nonprovisional Application requiring an inventor's
oath or declaration as the assignment will not be made part of the
application file nor will the Office recognize that the Sec. 1.63 oath
or declaration requirement has been satisfied. A copy of the assignment
would need to be submitted in reply to the Notice along with the
surcharge for the late submission of the inventor's oath or
declaration.
For EFS-Web filing of application papers, EFS-Web does not accept
[[Page 48790]]
assignments for recording purposes when filing an application. See
Legal Framework for Electronic Filing System--Web (EFS-Web), 74 FR
55200, 55202 (Oct. 27, 2009). Recording of assignments may only be done
electronically in EPAS (Electronic Patent Assignment System),
notwithstanding the existence of a link from EFS-Web to EPAS that can
be utilized to file an assignment after the application is filed.
Accordingly, for EFS-Web submissions, all assignments submitted on
filing of the application or later submitted will be made of record in
the application (entered into the Image File Wrapper (IFW)), and will
not be forwarded to the Assignment Recordation Branch for recordation
by the Office. Thus, an assignment must be submitted to the Assignment
Recordation Branch in order to comply with Sec. 1.63(e)(1)(ii). If an
applicant files the assignment-statement for recording via EPAS and
utilizes the check-box, the Office will place a copy of the assignment-
statement in the related application file.
Section 1.63(f) provides that with respect to an application naming
only one inventor, any reference to the inventor's oath or declaration
in 37 CFR chapter I also includes a substitute statement executed under
Sec. 1.64. Thus, any requirement in 37 CFR chapter I for the
inventor's oath or declaration with respect to an application naming
only one inventor is met if an oath or declaration under Sec. 1.63, an
assignment-statement under Sec. 1.63(e), or a substitute statement
under Sec. 1.64 executed by or with respect to the inventor is filed.
Section 1.63(f) also provides that with respect to an application
naming more than one inventor, any reference to the inventor's oath or
declaration in 37 CFR chapter I means the oaths, declarations, or
substitute statements that have been collectively executed by or with
respect to all of the joint inventors, unless otherwise clear from the
context. Thus, any requirement in 37 CFR chapter I for the inventor's
oath or declaration with respect to an application naming more than one
inventor is met if an oath or declaration under Sec. 1.63, an
assignment-statement under Sec. 1.63(e), or a substitute statement
under Sec. 1.64 executed by or with respect to each joint inventor is
filed.
Section 1.63(g) provides that an oath or declaration under Sec.
1.63, including the statement provided for in Sec. 1.63(e), must be
executed (i.e., signed) in accordance either with Sec. 1.66, or with
an acknowledgment that any willful false statement made in such
declaration or statement is punishable under 18 U.S.C. 1001 by fine or
imprisonment of not more than five (5) years, or both. See 35 U.S.C.
115(i). The inventor's oath or declaration must be executed (i.e.,
signed) by the inventor or the joint inventors, unless the oath or
declaration is a substitute statement under Sec. 1.64, which must be
signed by the party or parties making the statement, or an assignment
under Sec. 1.63(e), which must be signed by the individual who is
under the obligation of assignment of the patent application.
35 U.S.C. 115(h)(1) provides that any person making a statement
under this section may at any time ``withdraw, replace, or otherwise
correct the statement at any time.'' Section 1.63(h) provides that an
oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1)
will be placed in the file record of the application or patent, but may
not necessarily be reviewed by the Office. Oaths or declarations
submitted pursuant to 35 U.S.C. 115(h)(1) that are filed prior to the
mailing of a notice of allowance in an application would continue to be
reviewed by the Office for compliance with 35 U.S.C. 115 and the
applicable regulations. Oaths or declarations submitted pursuant to 35
U.S.C. 115(h)(1) that are filed after the mailing of a notice of
allowance in an application or patent would generally not be reviewed
by the Office. Section 1.63(h) further provides that any request for
correction of the named inventorship must comply with Sec. 1.48 in an
application and Sec. 1.324 in a patent. This is a reminder that the
mere submission of an oath or declaration pursuant to 35 U.S.C.
115(h)(1) will not operate to correct inventorship in compliance with
Sec. 1.48 in an application and Sec. 1.324 in a patent.
The provisions in former Sec. 1.63 concerning the power of
attorney in a continuing application are now contained in Sec. 1.32
and the correspondence address in a continuing application are now
contained in Sec. 1.33(f).
Section 1.64: Section 1.64 implements the substitute statement
provisions of 35 U.S.C. 115(d). The provisions of former Sec. 1.64
concerning who must execute an oath or declaration are now contained in
Sec. 1.63 with respect to an oath, declaration, or assignment-
statement under Sec. 1.63 and are now contained within Sec. 1.64 with
respect to who may execute a substitute statement.
Section 1.64(a) provides that an applicant under Sec. 1.43, 1.45
or 1.46 may execute a substitute statement in lieu of an oath or
declaration under Sec. 1.63 if the inventor is deceased, is under a
legal incapacity, has refused to execute the oath or declaration under
Sec. 1.63, or cannot be found or reached after diligent effort. 35
U.S.C. 115(d) provides that, in lieu of execution of an oath or
declaration by an inventor, the applicant for patent may provide a
substitute statement under the circumstances described in 35 U.S.C.
115(d)(2) and such additional circumstances as the Director specifies
by regulation. See 35 U.S.C. 115(d)(1). The circumstances set forth in
35 U.S.C. 115(d)(2) in which the applicant may provide a substitute
statement are the situations where the inventor is deceased, under
legal incapacity, or cannot be found or reached after diligent effort,
or is under an obligation to assign the invention but has refused to
execute the oath or declaration. See 35 U.S.C. 115(d)(2).
As discussed previously, 35 U.S.C. 115(d)(1) provides that the
applicant for patent may provide a substitute statement in lieu of
execution of an oath or declaration by an inventor under 35 U.S.C.
115(a) under such additional circumstances as the Director specifies by
regulation. The Office is permitting the applicant to provide a
substitute statement in lieu of an oath or declaration whenever the
inventor has refused to execute the oath or declaration, even if the
inventor is not under an obligation to assign the invention. 35 U.S.C.
118 and Sec. 1.46, as adopted in this final rule, provide that a
person who otherwise shows sufficient proprietary interest in the
matter may make an application for patent on behalf of and as agent for
the inventor on proof of the pertinent facts and a showing that such
action is appropriate to preserve the rights of the parties. Thus,
Sec. 1.64, as adopted in this final rule, permits a person who
otherwise shows sufficient proprietary interest in the matter to
execute a substitute statement in lieu of execution of an oath or
declaration by the inventor or a joint inventor if the inventor or a
joint refuses to join in an application for patent regardless of
whether there is an obligation to assign. 35 U.S.C. 116(b) and Sec.
1.45, as adopted in this final rule, provide that if a joint inventor
refuses to join in an application for patent or cannot be found or
reached after diligent effort, the application may be made by the other
inventor on behalf of himself and the omitted inventor. See 35 U.S.C.
116(b). Thus, Sec. 1.64, as adopted in this final rule, permits
another joint inventor to execute a substitute statement in lieu of
execution of an oath or declaration by the omitted inventor if a joint
inventor refuses to join in an application for patent regardless of
whether there is an obligation to assign the invention. If the
[[Page 48791]]
Office does not permit the applicant to also provide a substitute
statement in lieu of an oath or declaration whenever the inventor or a
joint inventor has refused to execute the oath or declaration (even if
the inventor or joint inventor is not under an obligation to assign the
invention), a person who otherwise shows sufficient proprietary
interest in the matter who provides a showing that such action is
appropriate to preserve the rights of the parties, or the remaining
inventor or inventors, may be the applicant under either 35 U.S.C. 118
or 116(b), respectively, but may be precluded from providing a
substitute statement in lieu of an oath or declaration. This is
consistent with existing Office practice under which a person who
otherwise shows sufficient proprietary interest in the matter or the
remaining inventor or inventors may execute the oath or declaration as
the applicant if all of the inventors have refused to execute the oath
or declaration.
Section 1.64(b) provides that a substitute statement under Sec.
1.64 must: (1) comply with the requirements of Sec. 1.63(a),
identifying the inventor or joint inventor with respect to whom a
substitute statement in lieu of an oath or declaration is executed, and
stating upon information and belief the facts which such inventor is
required to state; (2) identify the person executing the substitute
statement and the relationship of such person to the inventor or joint
inventor with respect to whom the substitute statement is executed, and
unless such information is supplied in an application data sheet in
accordance with Sec. 1.76, the residence and mailing address of the
person signing the substitute statement; and (3) identify the
circumstances permitting the person to execute the substitute statement
in lieu of an oath or declaration under Sec. 1.63, namely whether the
inventor is deceased, is under a legal incapacity, cannot be found or
reached after a diligent effort was made, or has refused to execute the
oath or declaration under Sec. 1.63. Section 1.64(b) also provides
that, unless such information is supplied in an application data sheet
in accordance with Sec. 1.76, the substitute statement must also
identify: (1) each inventor by his or her legal name; and (2) the last
known mailing address where the inventor customarily receives mail, and
last known residence, if an inventor lives at a location which is
different from where the inventor customarily receives mail, for each
inventor who is not deceased or under a legal incapacity.
Section 1.64(c) provides that a person may not execute a substitute
statement under Sec. 1.64 for an application unless that person has
reviewed and understands the contents of the application, including the
claims, and is aware of the duty to disclose to the Office all
information known to the person to be material to patentability as
defined in Sec. 1.56.
Section 1.64(d) provides that any reference to an inventor's oath
or declaration also includes a substitute statement provided for in
Sec. 1.64.
Section 1.64(e) provides that a substitute statement under Sec.
1.64 must contain an acknowledgment that any willful false statement
made in such statement is punishable under 18 U.S.C. 1001 by fine or
imprisonment of not more than five (5) years, or both.
Section 1.64(f) provides that a nonsigning inventor or legal
representative may subsequently join in the application by submitting
an oath or declaration under Sec. 1.63. Section 1.64(f) also provides
that the submission of an oath or declaration by a nonsigning inventor
or legal representative in an application filed under Sec. 1.43, 1.45
or 1.46 will not permit the nonsigning inventor or legal representative
to revoke or grant a power of attorney.
Section 1.66: Section 1.66 is amended to eliminate the special
provisions for oaths taken before an officer in a country other than
the United States.
Section 1.67: Section 1.67 provides for a supplemental inventor's
oath or declaration (which includes oaths, declarations, assignment-
statements under Sec. 1.63(e), and substitute statements under Sec.
1.64) under 35 U.S.C. 115(h).
Section 1.67(a) provides that the applicant may submit an
inventor's oath or declaration meeting the requirements of Sec. 1.63,
Sec. 1.64, or Sec. 1.162 to correct any deficiencies or inaccuracies
present in an earlier-filed inventor's oath or declaration. See 35
U.S.C. 115(h)(1). Section 1.67(a) also provides that deficiencies or
inaccuracies due to the failure to meet the requirements of Sec.
1.63(b) in an oath or declaration may be corrected with an application
data sheet in accordance with Sec. 1.76, except that any correction of
inventorship must be pursuant to Sec. 1.48.
Section 1.67(b) provides that a supplemental inventor's oath or
declaration under Sec. 1.67 must be executed by the person whose
inventor's oath or declaration is being withdrawn, replaced, or
otherwise corrected.
Section 1.67(c) provides that the Office will not require a person
who has executed an oath or declaration in compliance with 35 U.S.C.
115 and Sec. 1.63 or Sec. 1.162 for an application to provide an
additional inventor's oath or declaration for the application. See 35
U.S.C. 115(h)(2).
Section 1.67(d) contains the provision of former Sec. 1.67(b) that
no new matter may be introduced into a nonprovisional application after
its filing date even if an inventor's oath or declaration is filed to
correct deficiencies or inaccuracies present in the earlier-filed oath
or declaration.
Section 1.76: Section 1.76(a) is amended to clarify that an
application data sheet may be submitted in a provisional application
under 35 U.S.C. 111(b), a nonprovisional application under 35 U.S.C.
111(a), or a national stage application under 35 U.S.C. 371. Section
1.76(a) is also amended to require that an application data sheet must
be submitted to claim priority to or the benefit of a prior-filed
application under 35 U.S.C. 119, 120, 121, or 365 for consistency with
the changes to Sec. Sec. 1.55 and 1.78. Including foreign priority and
domestic benefit claims in the Office's Application Data Sheet form
(PTO/SB/14) can benefit applicants as the data can be loaded directly
into the Office's electronic systems; thus ensuring the data is
accurately captured. The data will only load directly into the Office's
electronic systems when the PTO/SB/14 is submitted as an EFS-Web
Fillable Form, rather than a scanned portable document format (PDF)
image submitted electronically via EFS-Web. Section 1.76(a) is also
amended to provide that the provisions of Sec. 1.76(c)(2) (discussed
subsequently) are an exception to the requirement that an application
data sheet must contain all of the section headings listed in Sec.
1.76(b), with any appropriate data for each section heading.
Section 1.76(b)(1) is amended to pertain to inventor information,
rather than applicant information. As discussed previously, the Office
plans to continue to use the inventor's name for application and patent
identification purposes as inventor names tend to provide a more
distinct identification than assignee name. Section 1.76(b)(1)
indicates that inventor information includes the legal name, residence,
and mailing address of the inventor or each joint inventor.
Section 1.76(b)(3) is amended to eliminate a suggested
classification, by class and subclass, and the Technology Center, from
the application information portion of the application data sheet. This
information is no longer utilized by the Office in view of internal
changes relating to how applications are classified.
[[Page 48792]]
Section 1.76(b)(5) is amended to provide that domestic benefit
information includes the application number, the filing date, the
status (including patent number if available), and relationship of each
application for which a benefit is claimed under 35 U.S.C. 119(e), 120,
121, or 365(c). Section 1.76(b)(5) further provides that providing this
information in the application data sheet constitutes the specific
reference required by 35 U.S.C. 119(e) or 120, and Sec. 1.78(a)(2) or
Sec. 1.78(a)(5).
Section 1.76(b)(7) is amended to pertain to ``applicant'' rather
than ``assignee'' information. Section 1.76(b)(7) provides that
applicant information includes the name (either natural person or
juristic entity) and address of the legal representative, assignee,
person to whom the inventor is under an obligation to assign the
invention, or person who otherwise shows sufficient proprietary
interest in the matter who is the applicant under Sec. 1.43 or 1.46.
Thus, Sec. 1.76(b)(7) provides for the situation in which the
applicant is a person other than the inventor under Sec. 1.43 (legal
representative) or Sec. 1.46 (assignee, person to whom the inventor is
under an obligation to assign the invention, or person who otherwise
shows sufficient proprietary interest in the matter). This section may
be left blank if the applicant is the inventor or is the remaining
joint inventor or inventors (Sec. 1.45).
As discussed previously, Sec. 1.46(b) provides that if an
application is filed by the assignee, a person to whom the inventor is
under an obligation to assign the invention, or a person who otherwise
shows sufficient proprietary interest in the matter, the application
must contain an application data sheet under Sec. 1.76 specifying the
assignee, person to whom the inventor is under an obligation to assign
the invention, or person who otherwise shows sufficient proprietary
interest in the matter in the applicant information section. As also
discussed previously, Sec. 1.46(c) provides that any request to
correct or update the name of the applicant, or change the applicant,
must include an application data sheet under Sec. 1.76 specifying the
applicant in the applicant information section. Section 1.76(b)(7)
continues to provide that providing assignment information in the
application data sheet does not substitute for compliance with any
requirement of 37 CFR part 3 to have an assignment recorded by the
Office.
Section 1.76(c) is amended to eliminate the distinction between an
application data sheet and a supplemental application data sheet. An
application data sheet provided on filing and an application data sheet
submitted after the filing date of the application are both considered
an application data sheet.
Section 1.76(c)(1) provides that information in a previously
submitted application data sheet, the inventor's oath or declaration
under Sec. 1.63, Sec. 1.64, or Sec. 1.67, or otherwise of record,
may be corrected or updated until payment of the issue fee by a new
application data sheet providing corrected or updated information,
except that inventorship changes must comply with the requirements of
Sec. 1.48, foreign priority and domestic benefit information changes
must comply with Sec. Sec. 1.55 and 1.78, and correspondence address
changes must comply with Sec. 1.33(a).
Section 1.76(c)(2) provides that an application data sheet
providing corrected or updated information may include all of the
sections listed in Sec. 1.76(b) or only those sections containing
changed or updated information. Section 1.76(c)(2) further provides
that the application data sheet must include the section headings
listed in Sec. 1.76(b) for each section included in the application
data sheet, and must identify the information that is being changed,
with underlining for insertions, and strike-through or brackets for
text removed, except that identification of information being changed
is not required for an application data sheet included with an initial
submission under 35 U.S.C. 371.
Section 1.76(d) governs the situation in which there are
inconsistencies between the application data sheet and other documents.
Section 1.76(d)(1) provides that the most recent submission will
govern (control) with respect to inconsistencies as between the
information provided in an application data sheet, a designation of a
correspondence address, or by the inventor's oath or declaration,
except that: (1) the most recent application data sheet will govern
with respect to foreign priority (Sec. 1.55) or domestic benefit
(Sec. 1.78) claims; and (2) the naming of the inventorship is governed
by Sec. 1.41 and changes to inventorship or the names of the inventors
is governed by Sec. 1.48. Section 1.76(d)(1) no longer references ``an
amendment to the specification'' as governing with respect to
inconsistencies in view of the changes to Sec. 1.78.
Section 1.76(d)(2) provides that the information in the application
data sheet will govern when the inconsistent information is supplied at
the same time by a designation of correspondence address or the
inventor's oath or declaration.
Section 1.76(d)(3) provides that the Office will capture
bibliographic information from the application data sheet. Section
1.76(d)(3) further provides that the Office will generally not review
the inventor's oath or declaration to determine if the bibliographic
information contained therein is consistent with the bibliographic
information provided in an application data sheet. Section 1.76(d)(3)
further provides that incorrect bibliographic information contained in
an application data sheet may be corrected as provided in Sec.
1.76(c)(1).
Section 1.76(e) provides that an application data sheet must be
signed in compliance with Sec. 1.33(b). Section 1.76(e) further
provides that an unsigned application data sheet will be treated only
as a transmittal letter. Thus, an unsigned application data sheet will
not be effective to provide the name of the inventor for any invention
claimed in the application (Sec. 1.41(b)), to make a claim to priority
of a foreign application (Sec. Sec. 1.55(a)(1)(i), (c) and
(d)(1)(ii)), or make a claim to the benefit of a prior-filed domestic
application (Sec. Sec. 1.78(a)(2)(iii) and (a)(5)(iii)).
The Office published a notice in March of 2008 indicating that the
requirement under Sec. 1.14(h)(2) that the written authority must be
submitted on a separate document is waived in the event the applicant
files a properly executed oath or declaration (e.g., the modified Form
PTO/SB/01) with the Authorization to Permit Access to Application by
Participating Offices. See Enhancement of Priority Document Exchange
Program and USPTO Declaration Form, 1328 Off. Gaz. Pat. Office 90, 91
(Mar. 11, 2008). In view of the changes to Sec. Sec. 1.63 and 1.76 in
this final rule, the Office is now providing that the requirement under
Sec. 1.14(h)(2) that the written authority must be submitted on a
separate document is not applicable if the applicant files a properly
executed application data sheet (e.g., the modified Form PTO/SB/14)
with the Authorization to Permit Access to Application by Participating
Offices
Section 1.77: Section 1.77(a)(6) is amended to refer to ``the
inventor's oath or declaration.'' See previous discussion of Sec.
1.16(f).
Section 1.78: Section 1.78(a)(2)(iii) is amended to provide that
the reference to the prior-filed application that is required for
benefit claim to a prior-filed nonprovisional application or
international application designating the U.S. by a nonprovisional
application must be in the application data sheet.
[[Page 48793]]
Sections 1.78(a)(5)(iii) is amended to provide that the reference
requirement for a benefit claim to a prior-filed provisional
application by a nonprovisional application must be in the application
data sheet.
Providing this information in the application data sheet
constitutes the specific reference required by 35 U.S.C. 119(e) or 120.
The patent statute requires that a claim to the benefit of (specific
reference to) a provisional application (35 U.S.C. 119(e)(1)) or
nonprovisional application (35 U.S.C. 120) be in the application. Since
the application data sheet (if provided) is considered part of the
application, the specific reference to an earlier filed provisional or
nonprovisional application in the application data sheet meets the
``specific reference'' requirement of 35 U.S.C. 119(e)(1) or 120.
Providing this information in a single location will also
facilitate more efficient processing of applications, as the Office
will only have to look at one location for the benefit claim and the
most recent application data sheet will govern. Formerly, the Office
had to look at the specification, amendments to the specification and
the application data sheet if provided to determine the benefit claim.
When applicants provided inconsistent information among the three
sources, the Office had to then determine which benefit claim governs
in accordance with the rule.
Providing this information in a single location will facilitate
review of patents and patent application publications, because
applications frequently provide a benefit and/or foreign priority claim
in the first sentence(s) of the specification, which is amended by an
application data sheet that includes a different benefit or foreign
priority claim, and thus the benefit claim and/or foreign priority
information contained on the front page of the patent or patent
application publication is different from the benefit claim and/or
foreign priority claim included in the first sentence(s) of the
specification. While the benefit and/or foreign priority claim on the
front page of the patent or patent application publication is usually
correct, anyone (including an examiner, a practitioner or the public)
reviewing the patent or patent application publication must review the
file history of the application. Since most applications are filed with
an application data sheet, requiring benefit and/or foreign priority
claims be included in the application data sheet will not require most
practitioners to change their practice.
Section 1.78(a)(5)(iv) is amended to delete the reference to ``an
amendment'' and to delete the word ``Supplemental.'' Section
1.78(a)(5)(iv) is also amended to change thre phrase ``withdrawing the
benefit claim'' to ``eliminating the reference under this paragraph to
the prior-filed provisional application.''
Section 1.78(c) is amended to change ``assignee'' to ``applicant.''
This change is for consistency with the change in practice concerning
who is the applicant for patent in Sec. 1.42.
Section 1.81: Section 1.81(a) is amended to change ``his or her
invention'' to ``the invention.'' This change is for consistency with
the change in practice concerning who is the applicant for patent in
Sec. 1.42.
Section 1.105: Section Sec. 1.105 is amended to remove Sec.
1.105(a)(2) (and redesignate Sec. Sec. 1.105(a)(3) and (a)(4) as
Sec. Sec. 1.105(a)(2) and (a)(3), respectively) as an assignee that
has asserted its right to prosecute the application is the applicant.
See Sec. 1.46.
Section 1.131: Section 1.131(a) is amended to change ``the inventor
of the subject matter of the rejected claim, the owner of the patent
under reexamination, or the party qualified under Sec. Sec. 1.42,
1.43, or 1.47'' to ``the applicant or patent owner.'' This change is
for consistency with the change in practice concerning who is the
applicant for patent in Sec. 1.42.
Section 1.136: Section 1.136(c)(1) is amended to refer to ``the
inventor's oath or declaration.'' See previous discussion of Sec.
1.16(f).
Section 1.153: Section 1.153(b) is amended to refer to ``the
inventor's oath or declaration.'' See previous discussion of Sec.
1.16(f).
Section 1.154: Section 1.154(a)(6) is amended to refer to ``the
inventor's oath or declaration.'' See previous discussion of Sec.
1.16(f).
Section 1.162: Section 1.162 is amended to state that the inventor
named for a plant patent application must be the person who has
invented or discovered and asexually reproduced the new and distinct
variety of plant for which a patent is sought. This change from
``applicant'' to ``inventor'' is for consistency with the change in
practice concerning who is the applicant for patent in Sec. 1.42.
Section 1.162 is also amended to refer to ``the inventor's oath or
declaration.'' See previous discussion of Sec. 1.16(f).
Section 1.163: Section 1.163(b)(6) is amended to refer to ``the
inventor's oath or declaration.'' See previous discussion of Sec.
1.16(f).
Section 1.172: Section 1.172(a) is revised to state that the
reissue applicant is the original patentee, or the current patent owner
if there has been an assignment. Section 1.172(a) requires that a
reissue application be accompanied by the written consent of all
assignees, if any, currently owning an undivided interest in the
patent, and that all assignees consenting to the reissue must establish
their ownership in the patent by filing in the reissue application a
submission in accordance with the provisions of Sec. 3.73(c). Section
1.172(b) provides that a reissue will be granted to the original
patentee, his legal representatives or assigns as the interest may
appear.
Section 1.175: Section 1.175(a) provides that the inventor's oath
or declaration for a reissue application, in addition to complying with
the requirements of Sec. 1.63, Sec. 1.64, orSec. 1.67, must also
specifically identify at least one error pursuant to 35 U.S.C. 251
being relied upon as the basis for reissue and state that the applicant
believes the original patent to be wholly or partly inoperative or
invalid by reason of a defective specification or drawing, or by reason
of the patentee claiming more or less than the patentee had the right
to claim in the patent. Examples of proper error statements are
discussed in MPEP Sec. 1414, II. The reissue oath or declaration may
identify more than one specific error that forms the basis of the
reissue, but at least one error must be identified.
Section 1.175(b) provides that if the reissue application seeks to
enlarge the scope of the claims of the patent (a basis for the reissue
is the patentee claiming less than the patentee had the right to claim
in the patent), the inventor's oath or declaration for a reissue
application must identify a claim that the application seeks to
broaden.
Section 1.175(b) indicates that a claim is a broadened claim if the
claim is broadened in any respect for purposes of 35 U.S.C. 251. See
Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir.
1987), In re Ruth, 278 F.2d 729, 730 (CCPA 1960), and In re Rogoff, 261
F.2d 601, 603 (CCPA 1958). The requirement that a claim broadened in
any respect be treated as a broadened claim is important to determine
who can sign the reissue oath or declaration. It also is important
because a reissue application that broadens the scope of the original
patent may only be filed within two years from the grant of the
original patent. See 35 U.S.C. 251(d).
Section 1.175(c) provides that the inventor, or each individual who
is a joint inventor of a claimed invention, in a reissue application
must execute an oath or declaration for the reissue application, except
as provided for in Sec. 1.64, and except that the inventor's oath or
declaration for a reissue application may be signed by the
[[Page 48794]]
assignee of the entire interest if: (1) The application does not seek
to enlarge the scope of the claims of the original patent; or (2) the
application for the original patent was filed under Sec. 1.46 by the
assignee of the entire interest. See 35 U.S.C. 251(c).
Section 1.175(d) provides that where all errors previously
identified in the inventor's oath or declaration for a reissue
application pursuant to Sec. 1.175(a) are no longer being relied upon
as the basis for reissue, the applicant must identify an error being
relied upon as the basis for reissue. Thus, a supplemental reissue oath
or declaration is no longer required where all errors previously
identified in the inventor's oath or declaration for a reissue
application pursuant to Sec. 1.175(a) are no longer being relied upon
as the basis for reissue. However, the applicant must still identify an
error being relied upon as the basis for reissue (e.g., in the remarks
of an amendment). A new reissue oath or declaration would be still
required if the reissue oath or declaration pursuant to Sec. 1.175(a)
fails to identify any error or fails to identify at least one error of
the type that would support a reissue. See MPEP Sec. 1402.
Section 1.175 does not contain a requirement for supplemental
reissue oaths or declarations in view of the change to 35 U.S.C. 251 in
section 20 of the AIA (i.e., removal of the ``without any deceptive
intention'' provision in section 20 of the AIA).
Section 1.175(e) provides that the inventor's oath or declaration
for a reissue application required by Sec. 1.175(a) may be submitted
under the provisions of Sec. 1.53(f), except that the provisions of
Sec. 1.53(f)(3) do not apply to a reissue application. Thus, the
inventor's oath or declaration for a reissue application must be
present before a reissue application will be examined.
Section 1.175(f) provides that the requirement for the inventor's
oath or declaration for a continuing reissue application that claims
the benefit under 35 U.S.C. 120, 121, or 365(c) in compliance with
Sec. 1.78 of an earlier-filed reissue application may be satisfied by
a copy of the inventor's oath or declaration from the earlier-filed
reissue application, provided that: (1) The inventor, or each
individual who is a joint inventor of a claimed invention, in the
reissue application executed an inventor's oath or declaration for the
earlier-filed reissue application, except as provided for in Sec.
1.64; (2) the continuing reissue application does not seek to enlarge
the scope of the claims of the original patent; or (3) the application
for the original patent was filed under Sec. 1.46 by the assignee of
the entire interest. Thus, the requirement for the inventor's oath or
declaration for a continuing reissue application may be satisfied by a
copy of the inventor's oath or declaration from the earlier-filed
reissue application except when all of the following conditions exist:
(1) The inventor's oath or declaration for the earlier-filed reissue
application was executed by the patent owner and not by or with respect
to the inventor, (2) the continuing reissue application seeks to
enlarge the scope of the claims of the original patent; and (3) the
application for the original patent was not filed under Sec. 1.46 by
the assignee of the entire interest. Section 1.175(f) further provides
that if all errors identified in the inventor's oath or declaration
from the earlier-filed reissue application are no longer being relied
upon as the basis for reissue, the applicant must identify an error
being relied upon as the basis for reissue.
Section 1.175(g) provides that an oath or declaration filed at any
time pursuant to 35 U.S.C. 115(h)(1), will be placed in the file record
of the reissue application, but may not necessarily be reviewed by the
Office.
Section 1.211: Section 1.211(c) is amended to no longer require
``an executed oath or declaration'' for publication of the application.
Section 1.211(c) is also amended to state that the Office may delay
publishing any application until it includes ``the inventor's oath or
declaration or application data sheet containing the information
specified in Sec. 1.63(b)'' and to no longer reference a petition
under Sec. 1.47. These changes are due to the change to Sec. Sec.
1.53 and 1.495 to allow applicants to postpone filing the inventor's
oath or declaration until the application is otherwise in condition for
allowance.
Section 1.215: Section 1.215(a) is amended to replace ``executed
oath or declaration'' with ``application data sheet and/or the
inventor's oath or declaration.'' This change is due to the change to
Sec. Sec. 1.53 and 1.495 to allow applicants to postpone filing the
inventor's oath or declaration until the application is otherwise in
condition for allowance.
Section 1.215(b) is amended to state that the patent application
publication will include the name of the assignee, person to whom the
inventor is under an obligation to assign the invention, or person who
otherwise shows sufficient proprietary interest in the matter if that
information is provided in the application data sheet in an application
filed under Sec. 1.46.
Section 1.215(c) is amended to replace ``oath or declaration'' with
``application data sheet and/or the inventor's oath or declaration.''
This change is due to the change to Sec. Sec. 1.53 and 1.495 to allow
applicants to postpone filing the inventor's oath or declaration until
the application is otherwise in condition for allowance.
Section 1.321: Section 1.321(b) is amended to provide that a
terminal disclaimer must be signed by the applicant or an attorney or
agent of record and state the present extent of applicant's ownership
interest in the patent to be granted.
Section 1.324: Section 1.324 is amended to no longer include a
``without deceptive intention'' requirement (as this requirement has
been eliminated from 35 U.S.C. 256 in section 20 of the AIA). Section
1.324(a) provides that whenever through error a person is named in an
issued patent as the inventor, or an inventor is not named in an issued
patent, the Director, pursuant to 35 U.S.C. 256, may, on application of
all the parties and assignees, or on order of a court before which such
matter is called in question, issue a certificate naming only the
actual inventor or inventors. See 35 U.S.C. 256.
Section 1.324(b) provides that any request to correct inventorship
of a patent pursuant to 1.324(a) must be accompanied by: (1) A
statement from each person who is being added as an inventor and each
person who is currently named as an inventor either agreeing to the
change of inventorship or stating that he or she has no disagreement in
regard to the requested change; (2) a statement from all assignees of
the parties submitting a statement under 1.324(b)(1) agreeing to the
change of inventorship in the patent, which statement must comply with
the requirements of Sec. 3.73(c); and (3) the fee set forth in Sec.
1.20(b).
Section 1.324(c) provides a cross reference to Sec. 1.48 for
correction of inventorship in an application.
Section 1.324(d) provides that in an interference under part 41,
subpart D, of this title, a request for correction of inventorship in a
patent must be in the form of a motion under Sec. 41.121(a)(2) of this
title, and that in a contested case under part 42, subpart D, of this
title, a request for correction of inventorship in a patent must be in
the form of a motion under Sec. 42.22 of this title. Section 1.324(d)
further provides that the motion under Sec. 41.121(a)(2) or 42.22 of
this title must comply with the requirements of Sec. 1.324.
Section 1.414: Section 1.414(c)(2) is amended to replace
``[a]ccepting for
[[Page 48795]]
national stage examination international applications which satisfy the
requirements of 35 U.S.C. 371'' with ``[n]ational stage processing for
international applications entering the national stage under 35 U.S.C.
371.'' As discussed previously, an international application does not
satisfy the requirements of 35 U.S.C. 371 until the inventor's oath or
declaration has been filed. Thus, under the changes to inventor's oath
or declaration practice in this final rule, the Office must process and
conduct national examination of international applications before they
satisfy the requirements of 35 U.S.C. 371.
Section 1.421: Section 1.421(b) is amended to provide that
``[a]lthough the United States Receiving Office will accept
international applications filed by any applicant who is a resident or
national of the U.S. for international processing, for the purposes of
the designation of the U.S., an international application will be
accepted by the Patent and Trademark Office for the national stage only
if the applicant is the inventor or other person as provided in Sec.
1.422 or Sec. 1.424.'' Section 1.421(b) continues to provide that
joint inventors must jointly apply for an international application.
Section 1.421 is amended to delete the provision of former Sec.
1.421(c) that for purposes of designations other than the U.S.,
international applications may be filed by the assignee or owner. This
provision is deleted in view of the changes to 35 U.S.C. 118 under the
AIA.
Sections 1.421(c), (d), and (e) contain the provisions of former
Sec. Sec. 1.421(d), (e), and (f), respectively.
Section 1.421(f) contains the provisions of former Sec. 1.421(g),
except for the provision that the submission of a separate power of
attorney may be excused upon the request of another applicant where one
or more inventors cannot be found or reached after diligent effort, and
that such a request must be accompanied by a statement explaining to
the satisfaction of the Director the lack of the signature concerned.
Section 1.422: Section 1.422 is amended to provide that if an
inventor is deceased or under legal incapacity, the legal
representative of the inventor may be an applicant in an international
application which designates the United States.
Section 1.423: Section 1.423 is removed and reserved as its
provisions are now in Sec. 1.422.
Section 1.424: Section 1.424 is added to provide for an assignee,
obligated assignee, or person who otherwise shows sufficient
proprietary interest in the matter as the applicant under 35 U.S.C. 118
in an international application.
Section 1.424(a) provides that a person to whom the inventor has
assigned or is under an obligation to assign the invention may be an
applicant in an international application which designates the U.S.
Section 1.424(a) also provides that a person who otherwise shows
sufficient proprietary interest in the matter may be an applicant in an
international application which designates the U.S. on proof of the
pertinent facts and a showing that such action is appropriate to
preserve the rights of the parties.
Section 1.424(b) provides that neither any showing required under
Sec. 1.424(a) nor documentary evidence of ownership or proprietary
interest will be required or considered by the Office in the
international stage, but such showings will be required in the national
stage in accordance with the conditions and requirements of Sec. 1.46.
Section 1.431: Section 1.431(b)(3)(iii) is amended to reference
Sec. Sec. 1.421, 1.422 and 1.424 for consistency with the removal of
Sec. 1.423 and the addition of Sec. 1.424.
Section 1.491: Section 1.491(b) is amended by stating that an
international application enters the national stage when the applicant
has filed ``the documents and fees required by 35 U.S.C. 371(c)(1) and
(c)(2) within the period set in Sec. 1.495'' rather than ``the
documents and fees required by 35 U.S.C. 371(c) within the period set
in Sec. 1.495.'' 35 U.S.C. 371 provides that ``[a]fter an
international application has entered the national stage, no patent may
be granted or refused thereon before the expiration of the applicable
time limit under [PCT Article 28 or 41], except with the express
consent of the applicant.'' See 35 U.S.C. 371(e). 35 U.S.C. 371,
however, does not define when an international application enters the
national stage. The Office formerly defined when an international
application enters the national stage as when the applicant files the
documents and fees required by 35 U.S.C. 371(c) within the period set
in Sec. 1.495, which means that an international application would not
enter the national stage until the applicant files the inventor's oath
or declaration. See 35 U.S.C. 371(c)(4). As the Office is changing
inventor's oath or declaration practice to allow applicants to postpone
filing the inventor's oath or declaration until the application is
otherwise in condition for allowance, the Office would be examining
international applications prior to national stage entry under the
definition of national stage entry provided in former Sec. 1.491(b).
Section 1.491(c) is added to state that an international
application fulfills the requirements of 35 U.S.C. 371 when all
applicable requirements of 35 U.S.C. 371, including commencement under
35 U.S.C. 371(b) or (f), have been satisfied. As discussed previously,
the fourteen-month time frame in 35 U.S.C. 154(b)(1)(A)(i)(II) for
issuing an Office action under 35 U.S.C. 132 or notice of allowance
under 35 U.S.C. 151 is measured from ``the date on which an
international application fulfilled the requirements of section 371 of
this title'' (not the date of commencement of national stage processing
or entry into the national stage). An international application does
not fulfill the requirements of 35 U.S.C. 371 until the applicant files
the inventor's oath or declaration. See 35 U.S.C. 371(c)(4) and MPEP
Sec. 1893.03(b). Thus, Sec. 1.491(c) is added as a reminder to PCT
applicants that an international application fulfills the requirements
of 35 U.S.C. 371 only when all applicable requirements of 35 U.S.C. 371
have been satisfied.
Section 1.492: Section 1.492(h) is amended to refer to ``the
inventor's oath or declaration.'' See previous discussion of Sec.
1.16(f).
Section 1.495: Section 1.495(a) is amended to remove the sentence
that stated ``international applications for which the requirements of
Sec. 1.495 are timely fulfilled will enter the national stage and
obtain an examination as to the patentability of the invention in the
United States of America'' as the sentence was confusing.
Section 1.495(c)(1)(ii) is amended to refer to ``the inventor's
oath or declaration.'' See previous discussion of Sec. 1.16(f).
Section 1.495(c)(2) provides that a notice under Sec. 1.495(c)(1)
will set a time period within which applicant must provide any omitted
translation, search fee set forth in Sec. 1.492(b), examination fee
set forth in Sec. 1.492(c), and any application size fee required by
Sec. 1.492(j) in order to avoid abandonment of the application.
Section 1.495(c)(3) (discussed subsequently) sets forth the time period
for filing the inventor's oath or declaration and provides the
conditions under which an applicant may postpone filing the inventor's
oath or declaration until the application is otherwise in condition for
allowance.
Section 1.495(c)(3) sets forth the time period for filing the
inventor's oath or declaration and provides the conditions under which
an applicant may postpone filing the inventor's oath or declaration
until the application is otherwise in condition for allowance. Section
[[Page 48796]]
1.495(c)(3) specifically provides that the inventor's oath or
declaration must also be filed within the period specified in Sec.
1.495(c)(2), except that the filing of the inventor's oath or
declaration may be postponed until the application is otherwise in
condition for allowance under the conditions specified in Sec. Sec.
1.495(c)(3)(i) through (c)(3)(iii). Section 1.495(c)(3)(i) provides
that the application must contain an application data sheet in
accordance with Sec. 1.76 filed prior to the expiration of the time
period set in any notice under Sec. 1.495(c)(1) identifying: (1) Each
inventor by his or her legal name; and (2) a mailing address where the
inventor customarily receives mail, and residence, if an inventor lives
at a location which is different from where the inventor customarily
receives mail, for each inventor. Section 1.495(c)(3)(ii) provides that
the applicant must file an oath or declaration in compliance with Sec.
1.63, or substitute statement in compliance with Sec. 1.64, executed
by or with respect to each actual inventor no later than the expiration
of the time period set in the ``Notice of Allowability'' to avoid
abandonment, when the applicant is notified in a ``Notice of
Allowability'' that an application is otherwise in condition for
allowance. The time period set in a ``Notice of Allowability'' is not
extendable. See Sec. 1.136(c). The Office may dispense with the notice
provided for in Sec. 1.495(c)(1) if an oath or declaration under Sec.
1.63, or substitute statement under Sec. 1.64, executed by or with
respect to each actual inventor has been filed before the application
is in condition for allowance.
Under former practice, the Office issued a Notification of Missing
Requirements if the basic national fee and copy of the international
application (if required under Sec. 1.495(b)(1)) have been received by
the expiration of thirty months from the priority date, but the
inventor's oath or declaration has not been filed. If the Office issued
a Notification of Missing Requirements, the applicant was given a time
period (the later of two months from the date of the notice or thirty-
two months from the priority date) within which to file the inventor's
oath or declaration and pay the surcharge required by Sec. 1.492(h) to
avoid abandonment. See MPEP Sec. 1893.01(e). The Office is modifying
this practice such that if a signed application data sheet providing
the information required by Sec. 1.495(c)(3)(i) has been received, but
not the inventor's oath or declaration, the Office will not issue a
Notification of Missing Requirements requiring the applicant to file
the inventor's oath or declaration. This change will not affect the
practice of issuing a Notification of Missing Requirements if another
requirement is missing (e.g., an English translation of the
international application required under Sec. 1.495(c) or the
surcharge required by Sec. 1.492(h) for filing the inventor's oath or
declaration after the date of commencement). If the basic national fee
and required copy of the international application have been received
by the expiration of thirty months from the priority date, but neither
the inventor's oath or declaration as required under Sec. 1.497 nor a
signed application data sheet providing the information required by
Sec. 1.495(c)(3)(i) have been received, the Office will issue a
Notification of Missing Requirements giving the applicant a time period
(at least two months) within which to file the inventor's oath or
declaration (or signed application data sheet providing the information
required by Sec. 1.495(c)(3)(i)) and surcharge required by Sec.
1.492(h) (unless previously paid) to avoid abandonment. In this
situation, the inventor's oath or declaration will not be required
within the period for reply to the Notification of Missing Requirements
if the applicant provides a signed application data sheet providing the
information required by Sec. 1.495(c)(3)(i) within the period for
reply to the Notification of Missing Requirements. The surcharge
required by Sec. 1.492(h), and any other item required by the
Notification, however, must be filed within the period for reply to the
Notification of Missing Requirements to avoid abandonment.
If an application is in condition for allowance and includes an
oath or declaration in compliance with Sec. 1.63, or substitute
statement in compliance with Sec. 1.64, executed by or with respect to
each actual inventor, the Office will issue a ``Notice of
Allowability'' (PTOL-37) and a ``Notice of Allowance and Fee(s) Due''
(PTOL-85). If an application is in condition for allowance but does not
include an oath or declaration in compliance with Sec. 1.63, or
substitute statement in compliance with Sec. 1.64, executed by or with
respect to each actual inventor, the Office will issue a ``Notice of
Allowability'' (PTOL-37) (but not a ``Notice of Allowance and Fee(s)
Due'' (PTOL-85)) giving the applicant three months to file an oath or
declaration in compliance with Sec. 1.63, or substitute statement in
compliance with Sec. 1.64, executed by or with respect to each actual
inventor, to avoid abandonment. This three-month time period is not
extendable under Sec. 1.136(a). The ``Notice of Allowance'' (PTOL-85)
will not be issued until the application includes an oath or
declaration in compliance with Sec. 1.63, or substitute statement in
compliance with Sec. 1.64, executed by or with respect to each actual
inventor.
Section 1.495(c)(3)(iii) provides that an international application
in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been
paid and for which an application data sheet in accordance with Sec.
1.76 has been filed may be treated as complying with 35 U.S.C. 371 for
purposes of eighteen-month publication under 35 U.S.C. 122(b) and Sec.
1.211 et seq. Section 4508 of the American Inventors Protection Act of
1999 provides that its eighteen-month publication provisions apply to
applications (other than for a design patent) filed under 35 U.S.C.
111(a) on or after November 29, 2000, and to applications in compliance
with 35 U.S.C. 371 that resulted from international applications filed
under 35 U.S.C. 363 on or after November 29, 2000. See Pub. L. 106-113,
113 Stat. 1501, 1501A-566 through 1501A-567 (1999). As discussed
previously, an international application is not in compliance with 35
U.S.C. 371 until the applicant files the inventor's oath or
declaration. See 35 U.S.C. 371(c)(4). Thus, this provision permits the
Office to treat an international application in which the basic
national fee under 35 U.S.C. 41(a)(1)(F) has been paid and for which an
application data sheet in accordance with Sec. 1.76 has been filed as
complying with 35 U.S.C. 371 for purposes of eighteen-month
publication.
There is a distinction between treating an international
application without the inventor's oath or declaration as complying
with 35 U.S.C. 371 for purposes of eighteen-month publication and
treating an international application without the inventor's oath or
declaration as fulfilling the requirements of 35 U.S.C. 371 for patent
term adjustment purposes. The PCT provides for eighteen-month
publication (PCT Article 21) and thus the publication by the Office of
an international application that is in compliance with 35 U.S.C. 371
is a republication of the application. See Changes to Implement
Eighteen-Month Publication of Patent Applications, 65 FR 57021, 57045
(Sept. 20, 2000) (comment 47 and response). Patent term adjustment,
however, has an impact on the rights of third parties to the
application process (the public). See 35 U.S.C. 282(c) (provides a
defense based
[[Page 48797]]
upon invalidity of an extension under 35 U.S.C. 154(b)).
Sections 1.495(c)(4) and (c)(5) contain the provisions of former
Sec. 1.495(c)(3) and (c)(4).
Section 1.495(g) provides that if the documents and fees contain
conflicting indications as between an application under 35 U.S.C. 111
and a submission to enter the national stage under 35 U.S.C. 371, the
documents and fees will be treated as a submission to enter the
national stage under 35 U.S.C. 371. It is Office experience that, in
most cases, documents and fees that contain such conflicting
indications were intended as submissions under 35 U.S.C. 371.
Section 1.495(h) is amended to delete the provision that if the
requirements of Sec. 1.495(b) are complied with within thirty months
from the priority date, but either any required translation of the
international application or the oath or declaration are not timely
filed, an international application will become abandoned as to the
U.S. upon expiration of the time period set pursuant to Sec. 1.495(c).
Section 1.496: Section 1.496 is amended to provide that national
stage applications having paid therein the search fee as set forth in
Sec. 1.492(b)(1) and examination fee as set forth in Sec. 1.492(c)(1)
may be amended subsequent to the date of commencement of national stage
processing only to the extent necessary to eliminate objections as to
form or to cancel rejected claims. Section 1.496 also provides that
such national stage applications will be advanced out of turn for
examination. Section 1.496 is also amended to eliminate the language
concerning when international applications are otherwise taken up for
examination as relating to an unnecessary internal Office instruction.
Section 1.497: Section 1.497(a) provides that when an applicant of
an international application desires to enter the national stage under
35 U.S.C. 371 pursuant to Sec. 1.495, and a declaration in compliance
with Sec. 1.63 has not been previously submitted in the international
application under PCT Rule 4.17(iv) within the time limits provided for
in PCT Rule 26ter.1, the applicant must file the inventor's oath or
declaration. Section 1.497(a) further provides that the inventor, or
each individual who is a joint inventor of a claimed invention, in an
application for patent must execute an oath or declaration in
accordance with the conditions and requirements of Sec. 1.63, except
as provided for in Sec. 1.64.
Section 1.497(b) provides that an oath or declaration under Sec.
1.63 will be accepted as complying with 35 U.S.C. 371(c)(4) if it
complies with the requirements of Sec. Sec. 1.63(a), (c) and (g).
Section 1.497(b) provides that a substitute statement under Sec. 1.64
will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies
with the requirements of Sec. Sec. 1.64(b)(1), (c) and (e) and
identifies the person executing the substitute statement. Section
1.497(b) further provides that if a newly executed inventor's oath or
declaration under Sec. 1.63 or substitute statement under Sec. 1.64
is not required pursuant to Sec. 1.63(d), submission of the copy of
the previously executed oath, declaration, or substitute statement
under Sec. 1.63(d)(1) is required to comply with 35 U.S.C. 371(c)(4).
Section 1.497(c) provides that if an oath or declaration under
Sec. 1.63, or substitute statement under Sec. 1.64, meeting the
requirements of Sec. 1.497(b) does not also meet the requirements of
Sec. 1.63 or 1.64, an oath, declaration, substitute statement, or
application data sheet in accordance with Sec. 1.76 to comply with
Sec. 1.63 or Sec. 1.64 will be required.
Section 1.530: Section 1.530(l)(1) is amended to eliminate the
``without deceptive intention'' requirement (as this requirement has
been eliminated from 35 U.S.C. 256 in section 20 of the AIA).
Section 1.730: Section 1.730(b)(1) is amended to change the
reference to ``3.73(b)'' to ``3.73(c)'' for consistency with the change
to Sec. 3.73.
37 CFR Part 3
Section 3.31: Section 3.31(h) is amended to provide that the
assignment cover sheet required by Sec. 3.28 must contain a
conspicuous indication of an intent to utilize the assignment as the
required oath or declaration under Sec. 1.63. This implements the
provision of 35 U.S.C. 115(e) which allows use of an assignment in lieu
of an oath or declaration to meet the oath or declaration requirements
of Sec. 1.63. See previous discussion of Sec. 1.63(e).
Section 3.71: Section 3.71(a) is amended to provide that one or
more assignees as defined in Sec. 3.71(b) may conduct prosecution of a
national patent application as the applicant under Sec. 1.46 of this
title, or conduct prosecution of a supplemental examination or
reexamination proceeding, to the exclusion of the inventor or previous
applicant or patent owner. Section 3.71(a) formerly provided that an
assignee may take over prosecution of a national patent application to
the exclusion of the inventor or previous assignee. As discussed
previously, in view of the changes to Sec. 1.46 to implement the
provisions of 35 U.S.C. 118, an assignee who files the application or
takes over prosecution of a national patent application does so as the
applicant under Sec. 1.46. Section 3.71(a) also includes a reference
to the supplemental examination proceedings that have been added by
section 12 of the AIA. Section 3.71(a) also provides that conflicts
between purported assignees are handled in accordance with Sec.
3.73(c)(3).
Section 3.71(b) provides that the assignee(s) who may conduct
either the prosecution of a national application for patent as the
applicant under Sec. 1.46 of this title or a supplemental examination
or reexamination proceeding are: (1) a single assignee who is the
assignee of the entire right, title and interest in the application or
patent, or (2) all partial assignees, or all partial assignees and
inventors who have not assigned their right, title and interest in the
application or patent, who together own the entire right, title and
interest in the application or patent. Section 3.71(b) provides that a
partial assignee is any assignee having less than the entire right,
title and interest in the application or patent. Section 3.71(b)
further provides that the word ``assignee'' as used in this chapter
means with respect to patent matters the single assignee of the entire
right, title and interest in the application or patent if there is such
a single assignee, or all of the partial assignees, or all of the
partial assignees and inventors who have not assigned their interest in
the application or patent, who together own the entire right, title and
interest in the application or patent.
Section 3.71(c) provides that an assignee becomes of record as the
applicant in a national patent application under Sec. 1.46 of this
title, and in a supplemental examination or reexamination proceeding,
by filing a statement in compliance with Sec. 3.73(c) that is signed
by a party who is authorized to act on behalf of the assignee.
Section 3.73: Section 3.73(a) provides with respect to patents that
the original applicant is presumed to be the owner of an application
for an original patent, and any patent that may issue therefrom, unless
there is an assignment. Thus, in view of the changes to Sec. 1.46 to
implement the provisions of 35 U.S.C. 118, the presumption is now that
the original applicant (and not the inventor(s)) is the owner of an
application for an original patent. Section 3.73(a) continues to
provide with respect to trademarks that the original applicant is
presumed to be the owner of a trademark application or
[[Page 48798]]
registration, unless there is an assignment.
Section 3.73(b) is amended to provide only for trademark matters
(patent matters are provided for in Sec. 3.73(c)). Section 3.73(b)
provides that in order to request or take action in a trademark matter,
the assignee must establish its ownership of the trademark property of
Sec. 3.73(a) to the satisfaction of the Director, and that the
establishment of ownership by the assignee may be combined with the
paper that requests or takes the action. Section 3.73(b) further
provides that ownership is established by submitting to the Office a
signed statement identifying the assignee, accompanied by either: (1)
documentary evidence of a chain of title from the original owner to the
assignee (e.g., copy of an executed assignment), which documents
submitted to establish ownership may be required to be recorded
pursuant to Sec. 3.11 in the assignment records of the Office as a
condition to permitting the assignee to take action in a matter pending
before the Office; or (2) a statement specifying where documentary
evidence of a chain of title from the original owner to the assignee is
recorded in the assignment records of the Office (e.g., reel and frame
number).
Section 3.73(c) provides that in order to request or take action in
a patent matter, an assignee who is not the original applicant must
establish its ownership of the patent property of Sec. 3.73(a) to the
satisfaction of the Director, and that the establishment of ownership
by the assignee may be combined with the paper that requests or takes
the action. Section 3.73(c) further provides that ownership is
established by submitting to the Office a signed statement identifying
the assignee, accompanied by either: (1) Documentary evidence of a
chain of title from the original owner to the assignee (e.g., copy of
an executed assignment), and that the submission of the documentary
evidence must be accompanied by a statement affirming that the
documentary evidence of the chain of title from the original owner to
the assignee was or concurrently is being submitted for recordation
pursuant to Sec. 3.11; or (2) a statement specifying where documentary
evidence of a chain of title from the original owner to the assignee is
recorded in the assignment records of the Office (e.g., reel and frame
number).
Section 3.73(c)(2) provides that if the submission is by an
assignee of less than the entire right, title and interest (e.g., more
than one assignee exists), the Office may refuse to accept the
submission as an establishment of ownership unless: (1) Each assignee
establishes the extent (by percentage) of its ownership interest, so as
to account for the entire right, title and interest in the application
or patent by all parties including inventors; or (2) each assignee
submits a statement identifying the parties including inventors who
together own the entire right, title and interest and stating that all
the identified parties own the entire right, title and interest.
Section 3.73(c)(3) provides that if two or more purported assignees
file conflicting statements under Sec. 3.73(c)(1), the Director will
determine which, if any, purported assignee will be permitted to
control prosecution of the application. This provision sets out the
Office's practice for treating two or more conflicting statements under
Sec. 3.73(c), currently discussed in MPEP Sec. 324, IX.
Section 3.73(d) provides that the submission establishing ownership
under Sec. 3.73(b) (for trademark matters) or Sec. 3.73(c) (for
patent matters) must show that the person signing the submission is a
person authorized to act on behalf of the assignee by: (1) Including a
statement that the person signing the submission is authorized to act
on behalf of the assignee; (2) being signed by a person having apparent
authority to sign on behalf of the assignee; or (3) for patent matters
only, being signed by a practitioner of record.
37 CFR Part 5
Section 5.25: Sections 5.25(a)(3)(iii) and 5.25(b) are amended to
deleted the ``without deceptive intention'' clauses for consistency
with the change to 35 U.S.C. 184 in section 20 of the AIA.
37 CFR Part 10
Section 10.23: Section 10.23(c)(11) is removed and reserved.
Section 1.52(c) no longer prohibits changes to the application papers
after execution of the inventor's oath or declaration. Thus, Sec.
10.23 is amended to eliminate the clause concerning knowingly filing or
causing to be filed an application containing any material alteration
made in the application papers after the signing of the accompanying
oath or declaration without identifying the alteration at the time of
filing the application papers (except as permitted by Sec. 1.52(c)) as
conduct which constitutes a violation of Sec. 10.23.
37 CFR Part 41
Section 41.9: Section 41.9(a) is amended to change the reference to
``3.73(b)'' to ``Sec. Sec. 3.71 and 3.73.''
Comments and Responses to Comments: As discussed previously, the
Office published a notice on January 6, 2012, proposing to change the
rules of practice to implement the inventor's oath or declaration
provisions of section 4 of the AIA. See Changes to Implement the
Inventor's Oath or Declaration Provisions of the Leahy-Smith America
Invents Act, 77 FR at 982-1003. The Office received thirty-one written
comments from intellectual property organizations, academia, industry,
law firms, individual patent practitioners, and the general public in
response to this notice. The comments and the Office's responses to the
comments follow:
A. Assignee Filing.
B. Oath/Declaration.
1. Time of submission.
2. Averments.
3. Inventors named.
4. Copies in continuing applications.
5. Supplemental Oath or Declaration.
6. Effective date.
7. Miscellaneous.
C. Substitute statements.
D. Combined declaration and assignment.
1. Generally.
2. Recordation of assignments.
E. Power of attorney.
F. PCT.
G. Reissue applications.
H. Application data sheet (Sec. 1.76).
1. Domestic benefit and foreign priority claims.
2. Form requirements.
I. Miscellaneous rules.
1. Mail stop (Sec. 1.1(e)).
2. Signatures (Sec. 1.4).
3. Juristic entity (Sec. 1.31).
4. Correspondence address (Sec. 1.33).
5. Person making declaration (Sec. 1.64).
6. Noncompliant declarations (Sec. 1.67).
7. Statement under Sec. 3.73.
8. Lack of deceptive intent.
A. Assignee Filing
Comment 1: A number of comments questioned the Office permitting
assignee filing only under the narrow exceptions of death, incapacity,
absence or refusal. A number of comments suggested that the rules be
revised to recognize that ``applicant'' and ``inventor'' are no longer
interchangeable because assignees, parties to whom an inventor is
obligated to assign, and parties with a sufficient proprietary interest
in the matter, can also be applicants. One comment stated that by
replacing the language in 35 U.S.C. 118 (which formerly permitted
filing by other than the inventor only in the situations where the
inventor was unwilling or unavailable to execute the oath or
declaration) with broader language, Congress has in 35 U.S.C. 118
authorized an assignee to file an application for a patent as the
applicant. A number of comments requested that the rules be revised for
submission of
[[Page 48799]]
the inventor statements in applications filed by assignees and
obligated assignees to simplify the submission of the inventor
statements, facilitate the process by which an assignee or obligated
assignee may file and prosecute applications, and accomplish greater
international harmonization. One comment suggested that, in the
interest of procedural harmonization with the patent laws of other
countries, the Office should dispense with the oath or declaration
entirely. One comment, however, expressed agreement with most of the
changes in the notice of proposed rulemaking, and agreement with the
requirement that inventors must execute oaths or declarations.
Response: The Office agrees that the AIA changes 35 U.S.C. 118 to
permit an assignee, an obligated assignee, or a person who otherwise
shows sufficient proprietary interest in the matter to make an
application as the ``applicant.'' Accordingly, this final rule revises
the rules of practice to provide that assignees, obligated assignees
(parties to whom an inventor is obligated to assign) and parties who
otherwise show sufficient proprietary interest in the matter may file
an application for patent as the applicant. Historically, being the
applicant was synonymous with being the one to execute the oath or
declaration under 35 U.S.C. 115. However, the AIA amends 35 U.S.C. 115
to separate being the applicant from being the one who must execute the
oath or declaration under 35 U.S.C. 115 (normally the inventor). Thus,
35 U.S.C. 115 and 118, as amended by the AIA, provide that an
application may be filed by a person other than the inventor as the
applicant, but 35 U.S.C. 115 still also requires an oath or declaration
from the inventor (except in certain situations). The situations in
which the applicant for patent may submit a substitute statement in
lieu of an oath or declaration with respect to an inventor are set
forth in 35 U.S.C. 115(d)(2).
Comment 2: A number of comments requested that the Office recognize
the ability of assignees, obligated assignees, and persons who
otherwise show sufficient proprietary interest in the matter to file an
application and have requested that the requirements be simplified. A
few comments suggested that in the case of an assignment or obligation
to assign, no documents should be required to perfect the right to file
the application. The comments stated that an application filed by the
assignee or an obligated assignee plus an oath or declaration by the
inventors would be sufficient. One comment suggested that the Office
should require no more than a copy of the assignment to perfect the
right to execute an oath or declaration, as the inventor no longer has
a property interest and thus the assignee should be able to make the
application without additional requirements. One comment suggested that
the Office permit assignees to make certifications regarding ownership
in the application data sheet.
Some comments recognized that the Office would likely want
documents containing ``proof of the pertinent facts and a showing that
such action is appropriate to preserve the rights of the parties''
where an application is filed by a party with sufficient proprietary
interest. However, two comments stated that there is no need for the
Office to review these documents to determine sufficiency, but rather
the Office should only review them to determine whether they appear to
satisfy the requirements for submission, with one comment stating that
any challenge to a filing should be made in court. One comment
requested that the Office not include any confidential documents used
as ``proof'' in the public image file wrapper. The comment suggested
that the Office could state in the file wrapper that certain agreements
were reviewed by the Office and found to fulfill the criteria.
Response: Section 1.46 as adopted in this final rule permits the
filing of applications by assignees, obligated assignees, and persons
who otherwise show sufficient proprietary interest in the matter with
an application data sheet identifying the party filing the application
(the applicant). For assignees and obligated assignees, documentary
evidence of an ownership interest should be recorded no later than the
date the issue fee is paid. See Sec. 1.46(b)(1).
Section 1.46 provides that parties who otherwise show sufficient
proprietary interest in the matter must also submit a petition with
documentary evidence of the sufficient proprietary interest. 35 U.S.C.
118 provides that a party with sufficient proprietary interest may file
an application, but the filing is done on behalf of and as agent for
the inventors on proof of the pertinent facts. The Office believes that
the petition is necessary in these situations to determine whether an
appropriate party is filing the application, which requires some
additional review as to the assertion of sufficient proprietary
interest. It is not the intent of the Office to make a definitive
factual determination of the showing of sufficiency of the proprietary
interest, but the showing will be reviewed to ensure that the party has
a valid basis for being treated as the applicant for patent on behalf
of and as agent for the inventors.
The documentary evidence submitted to establish proof of sufficient
proprietary interest is not always as clear-cut as an assignment or a
document showing an obligation to assign. Thus, it is appropriate that
the documentary evidence be visible in the file record when the
application becomes available to the public.
Comment 3: A number of comments suggested that all that should be
required on filing is a two-part statement affirming: (1) that the
applicant is either the inventor, or is authorized by the inventor to
file the application, and (2) that the applicant has filed with the
application or will file an inventor statement under 35 U.S.C. 115
before receiving a notice of allowance. In addition to the two-part
statement, one comment suggested that every application as filed could
be required to contain identifying information essential to the orderly
processing of the application, such as the name of the inventor, the
name of the applicant (if different from the inventor), residence, and
correspondence address. A number of comments suggested that, other than
the two-part statement and identifying information, no more than the
minimum averments mandated by 35 U.S.C. 115(b) should be required in an
inventor statement.
Response: In response to the comments, this final rule revises
Sec. 1.63 to require only the statements that are required by 35
U.S.C. 115(b), provided that an application data sheet is submitted to
provide inventor and other application information.
Comment 4: A number of comments suggested that the application data
sheet should be used to provide inventor information instead of an oath
or declaration. The comments suggested that the vast majority of
applications do not have inventorship or assignment issues and the
process of dealing with the formalities should be deferred until an
indication of allowable subject matter. Another comment stated that the
assignee-applicant is in the best position to decide who is to be named
as an inventor, based on a legal analysis of what it takes to be an
inventor, and the Office on its own should not raise inventorship
issues, as such issues are best handled through a derivation action or
a court action. One comment noted that early submission of the
declaration can be difficult for foreign applicants and entities whose
inventors are no longer available.
Response: The Office needs the correct identification of the
inventive
[[Page 48800]]
entity prior to examination of the application to determine whether an
exception under 35 U.S.C. 102(b), as amended in the AIA, is applicable
and to conduct a double patenting analysis. Accordingly, an applicant
may file the application and identify the inventive entity in either an
application data sheet under Sec. 1.76 or in the inventor's oath or
declaration. If an application data sheet is submitted with the
application or within the period provided in Sec. Sec. 1.53(f)(1) or
(f)(2), an applicant may postpone submission of the inventor's oath or
declaration until the application is in condition for allowance. The
Office does not generally question whether the identified inventive
entity is the inventor except in interference and contested cases.
Comment 5: One comment suggested that the proposed rules not
include a requirement for notification of a change in ownership no
later than payment of the issue fee.
Response: 35 U.S.C. 118 requires the Office to grant the patent to
the real party in interest where the application was filed under 35
U.S.C. 118 by a person other than the inventor. In order for the Office
to carry out this statutory mandate, the Office must be notified of any
change in the real party in interest no later than payment of the issue
fee. Therefore, Sec. 1.46, as adopted in this final rule, requires
applicants to notify the Office of any change in the real party in
interest no later than payment of the issue fee in the situation where
a real party in interest has filed the application under Sec. 1.46.
B. Oath/Declaration
1. Time of Submission
Comment 6: A number of comments suggested that, in view of 35
U.S.C. 115(f), the Office should not require applicants to file the
inventor's oath or declaration until the application is in condition
for allowance. One comment supported early submission of the oath or
declaration as better for the examination process and patent pendency.
Response: In response to the comments, this final rule permits
delaying submission of the inventor's oath or declaration until the
application is otherwise in condition for allowance. The inventor's
oath or declaration will not be required within the period specified in
Sec. Sec. 1.53(f)(1) or (f)(2) but may be filed when the application
is otherwise in condition for allowance if the application is an
original (non-reissue) application that contains an application data
sheet in accordance with Sec. 1.76 identifying: (1) Each inventor by
his or her legal name; and (2) a mailing address where the inventor
customarily receives mail, and residence, if an inventor lives at a
location which is different from where the inventor customarily
receives mail, for each inventor.
It should be noted that 35 U.S.C. 115(f) does not provide that an
applicant is entitled as a matter of right to postpone submission of
the inventor's oath or declaration until an application is in condition
for allowance. The Office's authority to set the period (and
conditions) under which the inventor's oath or declaration may be
submitted after the filing date of an application is set forth in 35
U.S.C. 111(a)(3) (``The application must be accompanied by the fee
required by law. The fee and oath or declaration may be submitted after
the specification and any required drawing are submitted, within such
period and under such conditions, including the payment of a surcharge,
as may be prescribed by the Director.'') and (a)(4) (``Upon failure to
submit the fee and oath or declaration within such prescribed period,
the application shall be regarded as abandoned, unless it is shown to
the satisfaction of the Director that the delay in submitting the fee
and oath or declaration was unavoidable or unintentional.''). See 35
U.S.C. 111(a)(3) and (a)(4) (AIA changes emphasized). Some previous
legislative proposals (e.g., S. 515 and H.R. 1260 in the 111th
Congress) would have changed this provision to delete any reference to
an oath (or declaration) such that the Office could not set the period
(and conditions) under which the inventor's oath or declaration could
be submitted after the filing date of an application. However, the AIA
maintains the existing provisions of 35 U.S.C. 111(a)(3) and (a)(4),
adding only ``or declaration'' after every instance. Thus, the Office
retains the authority to set the period (and conditions) under which
the inventor's oath or declaration must be submitted.
It should also be noted that 35 U.S.C 115(f) does not require the
Office to permit applicants to postpone submission of the inventor's
oath or declaration until allowance. The Office previously proposed
under existing 35 U.S.C. 111 and 115 to permit applicants to delay
submission of an oath or declaration until the expiration of a time
period set in the ``Notice of Allowability.'' See Changes to Implement
the Patent Business Goals, 63 FR 53497, 53503-06 (Oct. 5, 1998). The
Office, however, did not proceed with that proposal. See Changes to
Implement the Patent Business Goals, 64 FR 53771, 53773-74 (Oct. 4,
1999). Thus, the only effect of 35 U.S.C. 115(f) is to preclude the
Office from issuing a notice of allowance until each required
inventor's oath or declaration has been filed.
Comment 7: Two comments expressed concern about the fees to be
charged for the late submission of an oath or declaration. One comment
stated that 35 U.S.C. 111(a) and 371 do not require a surcharge for
submitting the oath or declaration after the filing date. One comment
stated that the preliminary proposed patent fee schedule published
February 7, 2012, indicated that the $130 surcharge would be increased
to $140 and that no actual unit cost was associated with this fee
because there was no specific activity supporting it other than
collecting and depositing the fee. The comment stated that this
contradicts the Office's statement in the notice of proposed rulemaking
that applications filed without an oath or declaration require special
processing. The comment also questioned the proposed fee of $3,000 for
filing the oath or declaration up to the notice of allowance on the
same basis that there is no specific activity supporting the fee other
than collecting and depositing the fee.
Response: The notice of proposed rulemaking did not propose, and
this final rule does not adopt, any change to the late filing surcharge
under Sec. 1.16(f). As discussed previously, 35 U.S.C. 111(a)(3)
provides that: ``The fee and oath or declaration may be submitted after
the specification and any required drawing are submitted, within such
period and under such conditions, including the payment of a surcharge,
as may be prescribed by the Director.'' While the Office is not
``required'' to charge this surcharge, the Office is permitted to
require it. The surcharge is due to the additional processing costs
incurred when the inventor's oath or declaration is submitted after
filing of the application and the initial processing of the
application. The fact that the cost of the additional processing of the
later-submitted oath or declaration is not tracked separately from
other pre-examination costs does not negate the existence of this cost.
In addition, under the changes in this final rule the Office will incur
additional costs due to the need to track submission of the inventor's
oath or declaration up to allowability of the application.
The Office published materials on its Internet Web site in February
2012, associated with a rulemaking to set and adjust patent fees using
the authority provided in section 10 of the AIA, which proposed a
$3,000 fee to
[[Page 48801]]
postpone submission of the inventor's oath or declaration until the
application is in condition for allowance. The final rule to set and
adjust patent fees under section 10 of the AIA will not include this
proposal.
Comment 8: One comment suggested that examiners should be properly
compensated for any additional work required by delays in establishing
the proper inventorship.
Response: The Office will require that the inventorship be named in
an application data sheet (or the inventor's oath or declaration) prior
to examination. Thus, the inventorship will be established before an
application is examined and examiners should not experience any delays
with respect to the establishment of the proper inventorship.
Additionally, compensation of examiners is not a subject of this
rulemaking.
2. Averments
Comment 9: A number of comments suggested that the Office should
not require the inventor's oath or declaration to contain any
statements other than the statements required by 35 U.S.C. 115(b).
Response: 35 U.S.C. 115(c) provides that the Office may specify
additional information relating to the inventor and to the invention
that is required to be included in an oath or declaration under 35
U.S.C. 115(a). In response to comments, however, the Office is
requiring that an oath or declaration contain only the averments
required by 35 U.S.C. 115(b), if the inventor information is provided
in an application data sheet. The Office has not retained regulatory
averments to be made in the inventor's oath or declaration, such as
acknowledgement of the duty of disclosure under Sec. 1.56. However, a
person may not execute an oath or declaration unless that person has
reviewed and understands the contents of the application, including the
claims, and is aware of the duty to disclose to the Office all
information that is material to patentability. See Sec. 1.63(c).
Comment 10: One comment stated that the averment in proposed Sec.
1.63(a)(5) that the application ``was made or authorized to be made by
the inventor'' should not be required in an oath or declaration that is
signed by the assignee.
Response: 35 U.S.C. 115(b)(1) requires that an oath or declaration
contain a statement that the application was made or was authorized to
be made by the affiant or declarant irrespective of whether the
application was filed by the assignee. Therefore, Sec. 1.63(a)(4)
requires the oath or declaration to state that the application was made
or was authorized to be made by the person executing the oath or
declaration.
3. Inventors Named
Comment 11: A number of comments suggested that the Office should
not require the inventor's oath or declaration to provide the names of
all of the inventors, which could be provided together in another
document (such as an application data sheet).
Response: An inventor executing an oath or declaration need only
identify himself or herself as an inventor, provided an application
data sheet is submitted to identify the complete inventive entity.
Comment 12: One comment stated that proposed Sec. 1.63(d)(2)
should be deleted since the naming of the inventive entity should be
established by filing an application data sheet in a continuing
application and thus there would be no need to request removal of
inventors.
Response: A request to remove one or more inventors is retained for
those situations where an application data sheet is not supplied
concurrently with or before submission of the inventor's oath or
declaration.
4. Copies in Continuing Applications
Comment 13: One comment suggested that the Office scan the inventor
statement or assignment into the Office's image file wrapper (IFW)
system so that a copy of any previously filed statement would not be
required in a later-filed application claiming benefit.
Response: Consistent with pre-existing practice and the notice of
proposed rulemaking, the Office is requiring a copy of the oath or
declaration or an assignment serving as the oath or declaration in
continuing applications so that the Office can determine whether an
oath or declaration has been executed by or with respect to each
inventor in a continuing application.
Comment 14: One comment questioned whether a combination assignment
and oath or declaration in a parent application would need to be
recorded against a continuation or a divisional application when also
used in the continuation or divisional application. The comment also
questioned whether the assignee listed on such an assignment would
still need to be the owner when submitting the oath or declaration in
the continuation or divisional application.
Response: Section 1.63(d)(1) provides that a newly executed oath or
declaration under Sec. 1.63 is not required for a continuing
application where a copy of the oath or declaration from the earlier-
filed application is provided. Where the oath or declaration is set
forth in an assignment document that was recorded against the parent
application, there is no requirement that the copy be again recorded
against the continuing application. 35 U.S.C. 115(g)(1) provides that
the requirement under 35 U.S.C. 115 for an oath or declaration shall
not apply to an individual named as the inventor or a joint inventor in
an application that claims benefit under 35 U.S.C. 120, 121, or 365(c)
of an earlier-filed application, if: (1) An oath or declaration meeting
the requirements of 35 U.S.C. 115(a) was executed by the individual and
was filed in connection with the earlier-filed application; (2) a
substitute statement meeting the requirements of 35 U.S.C. 115(d) was
filed in connection with the earlier-filed application with respect to
the individual; or (3) an assignment meeting the requirements of 35
U.S.C. 115(e) was executed with respect to the earlier-filed
application by the individual and was recorded in connection with the
earlier-filed application.
Comment 15: One comment asserted an inconsistency between proposed
Sec. 1.63(d)(1)(iii) which requires a new oath or declaration from
those inventors being added and Sec. 1.63(d)(2), which permits
deletion by a separate paper without a new oath or declaration. The
comment indicated that it is not clear how the statements in the oath
or declaration filed in the parent application can remain true where a
copy of the declaration from the parent is filed along with
declarations executed by only the newly added inventors. Other comments
noted that proposed Sec. Sec. 1.63(a)(4) and (a)(6) would prevent the
use of a copy of an oath or declaration in continuation-in-part
applications and possibly continuation and divisional applications.
Response: Section 1.63(d), as adopted in this final rule, provides
for use of a copy of the inventor's oath or declaration from a prior-
filed application in a continuing application, including a
continuation-in-part application. 35 U.S.C. 115(g) does not require a
new inventor's oath or declaration if: (1) An oath or declaration
meeting the requirements of 35 U.S.C. 115(a) was executed by the
individual and was filed in connection with the earlier-filed
application; (2) a substitute statement meeting the requirements of 35
U.S.C. 115(d) was filed in connection with the earlier-filed
application with respect to the individual; or (3) an
[[Page 48802]]
assignment meeting the requirements of 35 U.S.C. 115(e) was executed
with respect to the earlier-filed application by the individual and was
recorded in connection with the earlier-filed application. Thus, an
additional inventor's oath or declaration would be necessary in a
continuing application only for an inventor for whom an oath or
declaration was not submitted in the prior-filed application. Section
1.63(d), as adopted in this final rule, does not include the proposed
requirement that the statements in the copy of the inventor's oath or
declaration from a prior-filed application also be applicable to the
continuing application.
5. Supplemental Oath or Declaration
Comment 16: One comment asserted that once a one-time statement
from an inventor has been made in satisfaction of 35 U.S.C. 115, 35
U.S.C. 115(h)(2) precludes the Office from requiring any supplemental
oath or declaration. Several comments objected to proposed Sec. 1.67
and asserted that the Office was proposing to merely retain
requirements for supplemental oaths, notwithstanding the statutory
prohibition against them.
Response: Section 1.67(c) provides that the Office will not require
a person who has executed an oath or declaration in compliance with 35
U.S.C. 115 and Sec. 1.63 or Sec. 1.162 to provide an additional oath
or declaration. 35 U.S.C. 115(h)(2) precludes the Office from requiring
a supplemental oath or declaration only if the initial oath or
declaration complied with 35 U.S.C. 115 and Sec. 1.63 or Sec. 1.162.
Comment 17: One comment expressed concern about the elimination of
supplemental oaths (proposed Sec. 1.67(b)), as they give the inventor
the opportunity to object to the assignee's interpretation of the
invention which may be broader than the inventor's understanding of the
description. The comment noted the existing requirement that reissue
oaths or declarations be signed by the inventors when one or more
claims are being broadened, and suggested that inventors be permitted
to request ``post grant review'' to clarify new matter issues that may
arise from differences in interpretation.
Response: 35 U.S.C. 115(h)(1) and Sec. 1.67 provide that an
applicant may submit an inventor's oath or declaration to correct any
deficiencies or inaccuracies present in an earlier-filed inventor's
oath or declaration. 35 U.S.C. 115(h)(2) provides that supplemental
statements are not required where the oath or declaration meets 35
U.S.C. 115(a) or the assignment meets the requirements of 35 U.S.C.
115(e). Inventors still must execute an oath or declaration except
under the permitted circumstances. Thus, inventors would still have an
opportunity to review the application in connection with the execution
of the oath or declaration and raise any concerns regarding breadth of
the claimed invention with the assignee. Moreover, an inventor may have
access to the application file and can follow the prosecution. 35
U.S.C. 321(a) provides that a person who is not the owner may request
post grant review of a patent.
6. Effective Date
Comment 18: One comment questioned whether the Office would accept
oaths or declarations (1) In an application filed prior to September
16, 2012, in which the oath or declaration is filed on or after
September 16, 2012; and (2) in an application filed on or after
September 16, 2012, where the oath or declaration was executed prior to
September 16, 2012. One comment suggested that the Office clarify Sec.
1.63 to address applications that bridge the effective date of the rule
to make clear that a new declaration will not be required in a
continuing application where the prior declaration was compliant with
the new required statutory statements. A few comments recommended that
oaths or declarations filed before September 16, 2012, be grandfathered
in and accepted in continuing applications filed on or after September
16, 2012, even though the oaths or declarations contain the language in
former 35 U.S.C. 115 and not the language in new 35 U.S.C. 115(b).
Response: The changes to 35 U.S.C. 115 in the AIA apply to any
application filed on or after September 16, 2012. Accordingly, the date
of execution of the oath or declaration is not relevant, particularly
as the Office does not check such dates of execution. MPEP Sec.
602.05. For applications filed prior to September 16, 2012, any oath or
declaration filed before, on, or after September 16, 2012, must comply
with the oath and declaration rules in effect prior to September 16,
2012. Any oath or declaration submitted in an application filed on or
after September 16, 2012, (regardless of the date of execution of the
oath or declaration) must meet the requirements of 35 U.S.C. 115 as
amended by the AIA.
With respect to continuing applications, 35 U.S.C. 115(g)(1)(A)
provides an exception to a newly executed oath or declaration only
where the oath or declaration in the earlier-filed application meets
the requirements of amended 35 U.S.C. 115(a) which must include the
required statements in 35 U.S.C. 115(b). Accordingly, a copy of an oath
or declaration from a prior application filed before September 16,
2012, must meet the requirements of 35 U.S.C. 115 as amended by the
AIA.
Nevertheless, in view of the changes to permit applicants to
postpone the submission of the inventor's oath or declaration until the
application is otherwise in condition for allowance, the Office will no
longer review an oath or declaration in an application under 35 U.S.C.
111(a) for compliance with Sec. 1.63 (or a substitute statement for
compliance with Sec. 1.64) during the examination process. The Office
will review applications to determine whether the application includes
an oath or declaration executed by or with respect to each inventor
when the application is in condition for allowance.
7. Miscellaneous
Comment 19: One comment noted that 35 U.S.C. 115 requires ``the
name of the inventor,'' whereas proposed Sec. 1.63(a)(2) requires
identification by ``his or her full name without any abbreviation
(except for a middle initial)'' and thus places further restrictions on
what would otherwise be an uncomplicated requirement. Another comment
stated that the rules should permit an inventor to abbreviate his or
her first name if he or she is known by his or her middle name.
Response: The Office agrees that the phrase ``his or her full name
without any abbreviation (except for a middle initial)'' is more
complicated than necessary. The requirement for identification of the
name of the inventor in the rules of practice (e.g., Sec. 1.63(a)(1))
will be for the legal name of the inventor.
Comment 20: One comment suggested eliminating the requirement for
the residence in that: (1) It is still unclear what is intended by
residence (e.g., city, state, province, prefecture, etc.); (2) many
inventors would prefer to keep their residence private, especially
where the mailing address is the place of employment; and (3) it
requires assignees to violate their domestic privacy laws in some
countries (e.g., United Kingdom) by requiring inventors to make
residence information publicly available.
Response: The comment appears to confuse the separate requirements
for residence and mailing address. The residence, as noted in MPEP
Sec. 605.02, is a city and either a state or foreign country, while a
mailing address, as noted in MPEP Sec. 605.03, is where one
customarily receives mail, such as one's
[[Page 48803]]
home or business address. Additionally, a post office box may be used
as the mailing address. The Office reviews residence information to
ensure that a residence is provided, but the Office does not review the
manner in which the residence is stated. Thus, applicants should not
have concerns about distinctions between province and prefecture.
Comment 21: One comment requested revising the title to be
``Inventor's oath or declaration'' to distinguish the declaration
requirements in Sec. 1.63 from who may apply for a patent, which
should be addressed by Sec. 1.41.
Response: The Office agrees that the title of Sec. 1.63 should
read ``Inventor's oath or declaration.'' The title has been revised as
suggested.
Comment 22: One comment stated that proposed Sec. 1.63(c)(2) needs
to be corrected for grammatical clarity since it is unclear how a
reference itself would constitute an assignment.
Response: Section 1.63(e)(2) contains the language of proposed
Sec. 1.63(c)(2). The provision merely explains that the phrase ``oath
or declaration'' under Sec. 1.63 as referred to in the rules covers a
combination assignment and oath or declaration document.
Comment 23: One comment suggested that since a ``wet'' signature is
required for a declaration, the practitioner should be allowed to
obtain a ``wet'' signature for the practitioner's file and then submit
an S-signature by the practitioner with a notice to the Office that a
``wet'' signature is on file with this practitioner and will be
supplied to the Office if requested.
Response: An oath or declaration may be signed either with a wet
(handwritten, per Sec. 1.4(d)(1)) signature or an S-signature (e.g., a
printed name inserted between forward slashes, per Sec. 1.4(d)(2)),
regardless of whether the oath or declaration is filed with the Office
in paper, facsimile transmitted, or filed via the Office's Electronic
Filing System (EFS-Web). An S-signature is any signature not covered by
Sec. 1.4(d)(1), and an S-signature must be personally inserted by the
signer per Sec. 1.4(d)(2)(i). The practice suggested in the comment
would not have the signer personally insert the S-signature. Thus, it
would not be a proper signature by the inventor.
Comment 24: One comment suggested retaining in Sec. 1.63 the
statement that no minimum age is required to sign an oath or
declaration.
Response: Section 1.63(c) continues to recite that there is no
minimum age for a person to be qualified to execute an oath or
declaration.
Comment 25: One comment requested information as to whether the
Office will have updated forms to reflect the proposed rule changes at
the same time the rules take effect.
Response: The Office will have revised forms available prior to the
effective date of this final rule.
C. Substitute Statements
Comment 26: Several comments questioned the need for proof of facts
regarding the inventor who is not executing the inventor's oath or
declaration when filing a substitute statement where an assignee, party
to whom an inventor is under an obligation to assign or a party who
otherwise shows sufficient proprietary interest in the matter files the
application.
Response: In response to the comments, the Office is discontinuing
the practice of routinely requiring proof of facts when an oath or
declaration is not executed by each inventor. Section 1.64 provides
that an applicant under Sec. Sec. 1.43, 1.45 or 1.46 may execute a
substitute statement with identifying information regarding (1) the
inventor and the person executing the statement, and (2) the particular
permitted circumstances involved, e.g., the inventor cannot be reached
or has refused to execute the oath or declaration. Furthermore, a
person may not execute a substitute statement unless that person has
reviewed and understands the contents of the application and is aware
of the duty to disclose to the Office all information that is material
to patentability. Proof of the circumstances (e.g., attempts to contact
the inventor) is no longer required.
Comment 27: One comment expressed concern about the effect of 35
U.S.C. 115(d)(2)(B). The comment identified the situation where one
joint inventor refuses to execute the oath or declaration and since
none of the inventors are under an obligation to assign, the other
executing inventors may not be able to provide a substitute statement
on behalf of the nonsigning inventor.
Response: 35 U.S.C. 116(b) provides that if a joint inventor
refuses to join in an application for patent or cannot be found or
reached after diligent effort, the application may be made by the other
inventor on behalf of himself and the omitted inventor. Section 1.45,
as amended in this final rule, permits the other joint inventor or
inventors to make the application for patent as the applicant on behalf
of themselves and the omitted inventor if a joint inventor refuses to
join in an application for patent or cannot be found or reached after
diligent effort. 35 U.S.C. 115(d)(1) provides that the applicant for
patent may provide a substitute statement in lieu of execution of an
oath or declaration by an inventor under 35 U.S.C. 115(a) under such
additional circumstances as the Director specifies by regulation. Thus,
Sec. 1.64 as adopted in this final rule permits another joint inventor
to execute a substitute statement in lieu of execution of an oath or
declaration by the omitted inventor if a joint inventor refuses to join
in an application for patent (regardless of whether there is an
obligation to assign) or cannot be found or reached after diligent
effort.
Comment 28: One comment noted proposed Sec. 1.47 and requested
that the assignee be allowed to execute the oath or declaration on
behalf of the assigning inventor in general, and not only in
circumstances where the inventor has refused or cannot be found or
reached to execute the oath or declaration.
Response: 35 U.S.C. 115(a) explicitly requires execution of an
inventor's oath or declaration by each inventor except as otherwise
provided in 35 U.S.C. 115. The situations in which the applicant for
patent may submit a substitute statement in lieu of an oath or
declaration with respect to an inventor are set forth in 35 U.S.C.
115(d)(2).
D. Combined Declaration and Assignment
1. Generally
Comment 29: One comment recognized that the AIA provision for dual-
purpose documents (assignment and oath or declaration) is already
possible and asserted that the AIA prohibits the Office from making
rules that impede the use of dual-purpose documents, such as requiring
the recordation of the document before submission in the application as
required by proposed Sec. 1.63(c)(1)(ii). The comment asserted that
the recordation requirement is neither beneficial to the public nor
beneficial to assignees. The comment noted that some assignees may save
up and then record multiple assignments at once to save on recording
fees. In the absence of an explanation as to why flexibility is to be
taken away, the comment suggested that the proposed requirement for
recordation should not be adopted and the assignment should be made of
record in the application file.
A few comments, however, opposed submitting a copy of an assignment
containing the statements required of an oath or declaration in the
application file and noted that Congress did not
[[Page 48804]]
require an assignment with such oath or declaration statements to be
included in the application file and did not envision that the
statement would be ``examined'' by a patent examiner. These comments
stated that 35 U.S.C. 115(e) permits the assignment to simply be
recorded in the assignment records without submitting a copy in the
application file.
Response: 35 U.S.C. 115(e) provides for making the statements
required under 35 U.S.C. 115(b) and (c) in an ``assignment of record,''
and 35 U.S.C. 115(f) provides that a notice of allowance under 35
U.S.C. 151 may be provided to an applicant only if the applicant has
filed each required oath or declaration under 35 U.S.C. 115(a), or has
filed a substitute statement under 35 U.S.C. 115(d), or recorded an
assignment meeting the requirements of 35 U.S.C. 115(e). 35 U.S.C.
115(e) and (f) (emphasis added). Thus, the recording requirement of
Sec. 1.63(e)(1)(ii) is required by 35 U.S.C. 115, which envisions that
the assignment containing the statements required of an oath or
declaration be ``recorded.'' 35 U.S.C. 111(a)(2)(C) also requires that
an application contain an oath or declaration. If an applicant files in
paper an assignment-statement for recordation together with a patent
application, the Office will scan a copy of the assignment into the
Office IFW of the application and forward the submission to Assignment
Recordation Branch provided that there is a conspicuous indication of
an intent to utilize the assignment as the required oath or declaration
under Sec. 1.63.
Comment 30: One comment stated that proposed Sec. 1.63(a) should
be amended to clarify that an assignment that includes the statements
required by 35 U.S.C. 115(b) and (c) may be filed ``in lieu of filing
such statements separately'' pursuant to 35 U.S.C. 115(e).
Response: Section 1.63(e)(1) implements that portion of 35 U.S.C.
115(e) relating to the ``in lieu of'' language by its recitation that
an assignment may also serve as the oath or declaration.
Comment 31: With respect to the combined assignment and oath or
declaration document, one comment questioned the result if one portion
is determined to be void or voidable. The comment specifically
questioned whether the declaration portion would be void or invalid
where the assignment portion is found to be void or invalid. The
comment stated that the Office should clearly indicate that the
legality (or invalidity) of one part will not impact the other part.
Response: Where there is an error in the oath or declaration
portion, such as in bibliographic information, the rest of the oath or
declaration is still effective and only that error need be corrected.
See Sec. 1.67(a). In other instances, such as a failure to provide a
statutorily required averment, the oath or declaration must be
resubmitted. Where the assignment portion of a combined assignment and
oath or declaration document is found to be invalid, the combined
assignment and oath or declaration document would remain effective for
the declaration portion provided that the assignment contains the
statements required of an oath or declaration.
2. Recordation of Assignments
Comment 32: One comment opposed the proposed addition to a
recordation cover sheet of a check-box indicating that the assignment
is to be used in an application to comply with Sec. 1.63. The comment
asserted that the person filing the assignment is likely not a
registered practitioner and should not have the burden of arriving at a
legal conclusion as to whether the document is to serve as a
declaration. The comment further asserted that the application and
assignment are frequently separately filed electronically by different
individuals, and requested that the rule should be tailored for non-
electronic filing of the assignment containing the inventor statement.
Another comment suggested that the Office should update the Office's
Patent Application Information Retrieval (PAIR) system to directly link
recorded assignments to the application as recorded assignments are now
accessible only by physically traveling to the Office, at substantial
burden and cost on the requester.
Response: Section 3.31 requires that where an applicant has
included the statements required by 35 U.S.C. 115(b) and (c) in an
assignment, the applicant indicate as much to the Office via a check-
box on the assignment recordation cover sheet. Thus, the Office will
know both to record the assignment in the assignment database and to
place a copy of the assignment in its related application file, so that
applicants will not be required to submit an oath or declaration in the
application.
There are three ways to submit an assignment-statement document:
(1) In paper (including facsimile transmission); (2) through the
Electronic Patent Assignment System (EPAS); and (3) via EFS-Web. For
paper submissions, the Office frequently receives in the same envelope
a patent application, an assignment to be recorded in connection with
that application, the Assignment Recordation Cover Sheet (PTO-1595) and
the recordation fee. In such circumstances, the Office would simply
forward the assignment document and PTO-1595 to the Assignment
Recordation Branch for recording. As discussed previously, if an
applicant indicates that an assignment submitted for recording also
contains statements required of an oath or declaration, the Office will
scan a copy of the assignment into the Office IFW of the application
and forward the submission to Assignment Recordation Branch.
The Office notes the concern with the ability of a person
submitting the assignment-statement document for recordation being able
to make a legal conclusion as to the ability of an assignment to serve
as a combination assignment and oath or declaration document and so
indicate on the recordation cover sheet. The failure to check the box
to identify the submission as a combination assignment and oath or
declaration document, however, would not prevent the applicant from
submitting a copy of the assignment-statement in the application to
serve as the oath or declaration. More importantly, it is not necessary
for a person to make a legal conclusion as to the ability of an
assignment to serve as a combination assignment and oath or declaration
document and so indicate on the recordation cover sheet. The person
would only need to know the purpose for submission of the assignment.
E. Power of Attorney
Comment 33: One comment suggested that in regard to an application
filed by an assignee-applicant, the Office should permit only a power
of attorney from the assignee-applicant and not from the inventors. One
comment suggested that the reference in Sec. 1.33(f) to Sec. 3.71 (as
well as Sec. 1.31) is unnecessary in that an assignee may easily apply
for a patent and thus be the applicant referred to in Sec. 1.31.
Response: Section 1.33(b)(3) provides that a power of attorney can
be signed by the applicant. Section 1.42(b) provides that if a person
is applying for a patent as provided in Sec. 1.46, the person applying
for a patent under Sec. 1.46 (and not the inventor) is the applicant.
Accordingly, an assignee or obligated assignee who has filed an
application may supply an effective power of attorney without the need
to establish the right to take action under Sec. 3.71. For example, an
assignee who files an application can appoint a power of attorney,
provided that the party granting the power is the same party who filed
the application. Persons who
[[Page 48805]]
otherwise show sufficient proprietary interest in the matter may supply
a power of attorney along with a petition under Sec. 1.46(b)(2), which
power would be effective once the petition is granted. If an assignee,
obligated assignee, or person who otherwise show sufficient proprietary
interest in the matter is applying for a patent as provided in Sec.
1.46, the inventor is not the applicant and the Office would not accept
a power of attorney from the inventor.
Comment 34: One comment suggested that where the original
declaration provides a power of attorney by the inventors, the power of
attorney should automatically ``transfer'' as being a power of attorney
by the assignee where the inventors have or are obligated to assign
their portion to the assignee. The comment also stated that the power
of attorney should continue in an application when ownership is
transferred. Where a ``new'' assignee/applicant does not wish the
original attorney to have power of attorney, the ``new'' assignee/
applicant should then prepare and file the appropriate revocation and
new power of attorney and correspondence forms.
Response: Under this final rule, an assignee may file an
application on its own behalf as the applicant and should provide the
initial power of attorney. The transfer of ownership of an application
is external to the Office and would not affect any existing power of
attorney in the application file. See Sec. 1.36(a). It is the Office's
experience that where ownership of an application is changed, the new
assignee takes over the prosecution and provides a new power of
attorney.
Comment 35: Two comments stated that, with respect to proposed
Sec. 1.32(d), if the power of attorney in the earlier application is
from an assignee and a continuing application is filed that adds new
inventors, a new power of attorney should not be required where the
newly added inventors have also assigned, or are under an obligation to
assign, to the same assignee and the assignment is recorded at the
Office.
Response: Section 1.32(d) provides that a power of attorney will
have effect in a continuing application if a copy of the power is
supplied in the continuing application, unless the power of attorney
was granted by the inventors and the continuing application names an
inventor who was not named in the prior application. Therefore, if the
power of attorney in the earlier application is from the assignee (as
discussed in the comment), a new power of attorney is not required.
Comment 36: One comment stated that proposed Sec. 1.32(d) should
be broadened to include powers of attorney filed in provisional
applications so that a power of attorney filed in a provisional
application would have effect in a nonprovisional application that
claims the benefit of the provisional application under 35 U.S.C.
119(e) if submitted in the nonprovisional application.
Response: It is the Office's experience that powers of attorney are
not usually supplied in provisional applications, particularly as there
is no prosecution and they become abandoned after a year as a matter of
law. Accordingly, there is little need to provide for the carryover of
powers of attorney from a provisional application to a nonprovisional
application.
Comment 37: One comment asserted that the power of attorney rules
are ``form over substance'' and should be relaxed. The Office should
leave it to the attorneys and law firms to obtain the requisite
paperwork granting them power of attorney, which is to be retained in
the attorney's/law firm's record and if an issue arises that raises the
question of whether or not the attorney acted appropriately, the Office
should request a copy of the requisite power of attorney form and act
accordingly.
Response: Filing of a power of attorney in an application file is
not mandatory in that an attorney can act in a representative capacity
pursuant to Sec. 1.34, although there are some limitations, such as
signing a terminal disclaimer, change of correspondence address, or an
express abandonment without filing a continuation, MPEP Sec. 402.
Given the significant consequences to such actions, the Office believes
that such actions should only be undertaken pursuant to a power of
attorney that is of record in the application file.
Comment 38: One comment suggested that the Office should take the
position that when an applicant-assignee executes a power of attorney,
the attorney of record automatically has the right to act on behalf of
the applicant-assignee, including executing a statement under Sec.
3.73(b). A contrary comment stated that proposed Sec. 3.73(b)(2)(iii)
should not be implemented since it gives significantly more authority
to patent practitioners than an assignee may otherwise explicitly
authorize. The comment stated that only individuals who are authorized
to act on behalf of the assignee should be able to sign a statement
under Sec. 3.73(b).
Response: The Office disagrees with the position that the Office
should not treat a patent practitioner of record as being authorized to
act on behalf of the assignee. Section 3.73(d), as adopted in this
final rule, permits a patent practitioner of record to sign a statement
under Sec. 3.73(c) in patent matters. A party to a proceeding before
the Office is generally bound by the actions (or omissions) of his or
her representative. See Huston v. Ladner, 973 F.2d 1564 (Fed. Cir.
1992). There does not appear to be any reason to make an exception to
this general rule for statements under Sec. 3.73(c). If a particular
assignee has appointed a practitioner via a power of attorney document
but does not want the practitioner to be able to sign a Sec. 3.73(c)
statement, then such assignee can inform the practitioner of such a
limit on his or her authority. That, however, is a matter between the
assignee and its chosen representative, and the Office is not the forum
for resolving disputes between an applicant and his or her
representative. See Ray v. Lehman, 55 F.3d 606 (Fed. Cir. 1995).
Comment 39: One comment suggested that powers of attorney and
statements under Sec. 3.73(b) filed before September 16, 2012 in
patent applications, including provisional applications, should be
grandfathered in and permitted to be filed in pending and continuing
applications.
Response: The applicability date section of the final rule
identifies which rules apply only to patent applications filed on or
after September 16, 2012. Section 3.73 applies only to patent
applications filed on or after September 16, 2012, but it applies to
any patent application filed on or after September 16, 2012, even of
that application claims the benefit of a provisional or nonprovisional
application filed prior to September 16, 2012.
F. PCT
Comment 40: One comment stated that the PCT rules should no longer
require a statement that the inventor is the applicant for the U.S.
only. A different carve out in PCT for U.S. law should be used for what
remains unique to U.S. law, such as where the inventor is under a
continuous duty to disclose known material information.
Response: The rules governing applicants for international
applications (Sec. Sec. 1.421, 1.422, and 1.424) have been amended
consistent with the AIA to no longer require that an inventor be an
applicant in the United States.
Comment 41: One comment stated that it is unclear whether proposed
Sec. 1.48(k) only applies if an executed declaration submitted under
PCT Rule 4.17(iv) has been filed. The comment suggested adding a second
sentence to reference Sec. 1.41(a)(4) for correction of
[[Page 48806]]
inventorship of an international application entering the national
stage under 35 U.S.C. 371 in which no oath or declaration has been
filed.
Response: In response to the comments, the Office has revised Sec.
1.48 in this final rule. Section 1.48(a) applies to nonprovisional
applications, including U.S. national stage applications in which the
basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid. Under
Sec. 1.48(a), the requirements for correcting inventorship have been
eased, requiring only an application data sheet setting forth the
inventive entity, a processing fee, and an oath or declaration as
required by Sec. 1.63 (or substitute statement in compliance with
Sec. 1.64) for any actual inventor who has not executed such an oath
or declaration. Furthermore, recognizing that inventorship sometimes
changes in a national stage application from that originally indicated
in the international phase, Sec. 1.41(e) allows applicants to set
inventorship in a U.S. national stage application without having to
request correction under Sec. 1.48(a) by simply including with the
initial submission under 35 U.S.C. 371 an application data sheet in
accordance with Sec. 1.76 setting forth the correct inventive entity.
Comment 42: One comment questioned whether an application data
sheet filed with a national stage entry, after the PCT filing date, is
considered a supplemental application data sheet, or whether it was
intended that the document be called an application data sheet, in
which case Sec. 1.76(a) should be amended to recite ``or after payment
of the basic national fee for a national stage entry under 35 U.S.C.
371.''
Response: The distinction between ``application data sheet'' and
``supplemental application data sheet'' has been a source of confusion
for applicants. Accordingly, the Office revised Sec. 1.76 to eliminate
``supplemental application data sheet'' and simply refer to
``application data sheet.'' In this regard, Sec. 1.76(c) in this final
rule, now indicates that information in a previously submitted
application data sheet, or the inventor's oath or declaration under
Sec. 1.63, Sec. 1.64, or Sec. 1.67, or otherwise of record, may be
corrected or updated until payment of the issue fee by a new
application data sheet providing corrected or updated information,
except that inventorship changes must comply with the requirements of
Sec. 1.48, foreign priority and domestic benefit information changes
must comply with Sec. Sec. 1.55 and 1.78, and correspondence address
changes are governed by Sec. 1.33(a).
G. Reissue Applications
Comment 43: One comment suggested amending the title of Sec. 1.172
(``Applicants'') to include a reference to ``inventor'' because the
term ``inventor'' is no longer synonymous with ``applicant.'' One
comment suggested revising the parenthetical in Sec. 1.172(b)(2)(ii)
by replacing the concept of the assignee executing the oath or
declaration with the assignee providing a substitute statement as the
applicant in the patent being reissued. One comment suggested that
Sec. Sec. 1.172 and 1.175 be revised to provide for filing a
substitute statement, rather than an oath or declaration, in the
permitted circumstances.
Response: The use of ``applicant'' in the title of Sec. 1.172 is a
generic term that will cover assignees and inventors when either are
the applicant. In this final rule, Sec. 1.172 has been revised to no
longer address execution of the oath or declaration. Section 1.175(c)
provides for filing a substitute statement in reissue applications by
its reference to Sec. 1.64.
Comment 44: One comment suggested eliminating the requirement for
identifying whether a claim is broadened under Sec. 1.175(b). The
comment asserted that the requirement is a complex legal issue in that
cancellation of one claim may constitute broadening of another claim,
and claim scope may be narrowed even though claims are not amended, and
such legal determination should be left to the examiner and not to
applicant as part of an inventor's declaration.
Response: 35 U.S.C. 251(d) places a time limit on the filing of a
broadening reissue application. Accordingly, applicants must make a
determination as to whether a reissue application is being filed with a
broadened claim. Applicants, in filing a reissue application, already
have a good indication as to whether the error that renders the patent
wholly or partly inoperative or invalid is one that is driven by a need
to broaden or narrow the claims. Thus, focusing applicants' attention
on whether a claim is being broadened should not be burdensome on
applicants, and is beneficial to examination of the reissue
application.
Comment 45: One comment stated that it is unclear why at least one
error being relied upon as the basis for reissue must be identified in
the declaration, and suggested that such an error could be identified
by the attorney of record. Two comments questioned the requirement for
a supplemental oath or declaration in a reissue application where all
errors previously identified are no longer relied upon, particularly in
view of the elimination of the ``without deceptive intent'' language
from 35 U.S.C. 251.
Response: The requirement to initially identify the error being
corrected in the oath or declaration has been retained as the Office
believes that the error being used to support jurisdiction for a
reissue should be acknowledged by the inventor. In view of 35 U.S.C.
115(h)(2), the Office will permit the practitioner to identify a
replacement error where the first error is no longer being corrected.
The retention of a requirement, albeit by practitioner statement rather
than by supplemental oath or declaration, to identify an error being
corrected (where the initially identified error being corrected is no
longer being corrected) is deemed necessary so that the file record
clearly establishes jurisdiction for the reissue. It should be noted,
however, that where the original oath or declaration does not comply
with Sec. 1.175, the Office will require a compliant oath or
declaration, and a practitioner statement will not be sufficient.
H. Application Data Sheet (Sec. 1.76)
1. Domestic Benefit and Foreign Priority Claims
Comment 46: One comment suggested that the Office construe an
identification of 35 U.S.C. 120 benefit information in an application
data sheet as an instruction to amend the application to include that
information if it is not already present, or to replace such
information in the specification if it is inconsistent.
Response: An application data sheet is part of the application. See
Sec. 1.76(a).
Comment 47: One comment questioned whether applications filed
before September 16, 2012, would be grandfathered in with regard to how
a claim for foreign priority or domestic benefit must be made. The
comment requested clarification as to whether the requirement that all
priority and benefit claims be in an application data sheet or
supplemental application data sheet depends on the filing date of the
application or on the date of filing of the foreign priority or
domestic benefit claim.
Response: Applications filed on or after September 16, 2012, must
comply with Sec. Sec. 1.55 or 1.78 as amended by this final rule.
Applications filed before September 16, 2012, need not comply with
Sec. Sec. 1.55 or 1.78 as amended by this final rule (but would need
to comply with Sec. Sec. 1.55 or 1.78 as previously in effect).
[[Page 48807]]
Comment 48: One comment questioned what information the Office
would enter into the application file record if, on the same day (e.g.,
application filing date), a priority claim is made both in the
application data sheet and the first paragraph of the specification,
but the information between the two varies, e.g., one has a
typographical error in the priority date or priority document number.
Response: For applications filed on or after September 16, 2012, a
foreign priority claim under Sec. 1.55 or domestic benefit claim under
Sec. 1.78 made in the first paragraph of a specification would not be
an effective priority or benefit claim and the Office would process the
priority claim based on the information in the application data sheet.
2. Form Requirements
Comment 49: One comment suggested that the application data sheet
be treated as authoritative in all cases, even where there are
inconsistencies between the application data sheet and the oath or
declaration, and Sec. 1.76(d) deleted so that the most recent
application data sheet would always control.
Response: Section 1.76(d)(1)(ii) provides that the most recent
submission of an application data sheet will govern in most instances,
except that the naming of the inventorship is governed by Sec. 1.41
and changes to inventorship or the names of the inventors is governed
by Sec. 1.48. Section 1.76(d)(2) provides that the application data
sheet will govern when the inconsistent information is supplied at the
same time by a designation of correspondence address or the inventor's
oath or declaration.
Comment 50: One comment believed that consideration of the
application data sheet as part of the application causes a practitioner
to engage in misconduct under Sec. 10.23. The comment asserted that
the Office stated that the application data sheet must not be signed by
an inventor and that the application data sheet is generally not
reviewed by an inventor executing the declaration. Thus, a practitioner
submitting an application data sheet with an application, with an
already executed declaration, would have altered the application in
violation of Sec. 10.23(c)(11), which states that conduct which
constitutes a violation includes ``filing or causing to be filed an
application containing any material alteration made in the application
papers after the signing of the accompanying oath or declaration
without identifying the alteration at the time of filing the
application papers.''
Response: In response to the comment, Sec. 1.52(c) now provides
that an alteration of the application papers may be made after the
signing of the inventor's oath or declaration provided the statements
made in the oath or declaration remain applicable. Thus, an application
data sheet signed after the execution of the oath or declaration would
be a permitted alteration where any change brought about by the
application data sheet does not alter the applicability of the
statements in the oath or declaration. Additionally, there is no
prohibition on the inventive entity signing an application data sheet,
but the inventive entity would not need to sign an application data
sheet if the document is signed by a practitioner. Section 10.23(c)(11)
has been removed and reserved in view of the change to Sec. 1.52(c).
Comment 51: One comment suggested that a new section be included in
the application data sheet as a method of identifying the
``applicant,'' which may be the assignee, obligated assignee, or a
person who otherwise shows sufficient proprietary interest. One comment
suggested that a method be provided for identifying the applicant
(inventor, assignee, obligated assignee, or some other person or
entity) in the application data sheet with provisions regarding the
information required to identify the applicant.
Response: Section 1.76(b)(7) has been retitled ``Applicant
Information'' and is identified as including assignees, persons to whom
the inventor is under an obligation to assign, or persons who otherwise
show sufficient proprietary interest in the matter. No further
information in the ``Applicant Information'' section, other than the
identification of the applicant (i.e., name and address), is needed.
Comment 52: One comment supported the proposed change to Sec. 1.76
in amended form. The comment asserted that the requirement that a
supplemental application data sheet contain all the section headings
and all the appropriate data for each section heading is burdensome on
applicants and on the Office. The comment noted that often a
supplemental application data sheet changes a single word or single
number or single line of text in one field of the seven section
headings. Reproduction by applicant and scouring of text by the Office
would be limited if only the change were provided. Since supplemental
application data sheets are hand-keyed rather than scanned and
converted into text by optical character recognition, Office personnel
must wade through large amounts of unchanged information to try to
catch one or two changed items. One comment stated that when submitting
a supplemental application data sheet to correct information in the
file, the applicant should be able to file the application data sheet
form (PTO/SB/14) and show only those changes being requested without
strike-through and underlining.
Response: Where information in an application data sheet is changed
with submission of a later-submitted application data sheet, only the
appropriate data for each section heading to be changed need be filled
in identifying the change in information with appropriate markings.
Some information, such as benefit or priority claims, can be extensive
in nature and would be burdensome for the Office to identify the
specific change without a mark-up. Furthermore, some benefit claims
contain a chain of applications and the entire chain needs to be
provided to ensure that the information is accurate.
Comment 53: One comment questioned whether a supplemental
application data sheet that is the first filed application data sheet
must be underlined in its entirety or whether only the information that
is different from the information that the Office currently has in its
records must be underlined. One comment recommended that Sec. 1.76 be
simplified as it is extensive and burdensome. The comment stated that
it is not easy to prepare a supplemental application data sheet since
the Office does not provide a supplemental application data sheet form.
Response: In response to the comments, the Office is discarding the
notion of the ``supplemental'' application data sheet. The first filed
application data sheet would not need to contain any markings unless
information is being updated or corrected. Additionally, an application
data sheet included with an initial submission under 35 U.S.C. 371
would not need to contain any markings. An application data sheet that
is updating or correcting information must identify the information
that is being changed with underlining for insertions, and strike-
through or brackets for text removed.
I. Miscellaneous Rules
1. Mail Stop (Sec. 1.1(e))
Comment 54: One comment suggested that the Office not go forward
with the proposed change of a mail stop from ``Mail Stop Patent Ext.''
to ``Mail Stop Hatch-Waxman PTE.'' The comment stated that the change
incurs training costs on both the Office and applicants
[[Page 48808]]
with no apparent benefit to either applicants or the Office,
particularly as the Office does not provide the actual underlying
reason for the proposed change.
Response: Section 1.1(e) is being revised to reflect the current
mail stop for applications under 35 U.S.C. 156 for patent term
extension and additional correspondence regarding applications for
patent term extension under 35 U.S.C. 156. The current mail stop for
such applications and correspondence is ``Mail Stop Hatch-Waxman PTE.''
The Office published a notice including this new mail stop on November
21, 2006. See Mailing and Hand Carry Addresses for the United States
Patent and Trademark Office, 1312 Off. Gaz. Pat. Office 107 (Nov. 21,
2006). The mail stop designated as ``Mail Stop Patent Ext.'' is for
applications for patent term extension or adjustment under 35 U.S.C.
154 and any communication relating thereto (except when being mailed
together with the issue fee). The two different mail stops lead to more
efficient processing of the different types of applications and
correspondence for patent term extension and adjustment since different
areas of the Office process the different correspondence. Thus, Sec.
1.1(e) has been revised to reflect the correct mail stop.
2. Signatures (Sec. 1.4)
Comment 55: Several comments questioned whether proposed Sec.
1.4(e) would prevent the use of credit card payments with electronic
submissions, such as EFS-Web, EPAS, the Office's Revenue Accounting and
Management (RAM) system, the Office's Order Entry Management System
(OEMS), and the Central Fax Number. Another comment questioned whether
the proposed change means that patentees will not be able to pay
maintenance fees online with a credit card.
Response: Section 1.4(e) does not prevent the use of credit card
payments with electronic submissions via the Office's electronic filing
systems such as EFS-Web. Section 1.4(e) has been revised to require an
original handwritten signature personally signed in permanent dark ink
or its equivalent for payments by credit cards where the payment is not
being made via the Office's various electronic filing systems. An
original handwritten signature is only required when the credit card
payment is being made in paper, and thus the Office's Credit Card
Payment Form, PTO-2038, or an equivalent, is being used. The credit
card payment form is not required (and should not be used) when making
a credit card payment via EFS-Web or other electronic filing systems. A
submission via the Central Facsimile Number is not considered an
electronic submission and thus credit card payments being made by
facsimile submission to the Central Facsimile Number require an
original handwritten signature.
Comment 56: One comment stated that there are various rules which
seem to require an original signature and requested that the Office
clarify that such ``original signatures'' include ``e-signatures.''
Response: The term ``original'' is used in connection with
handwritten signatures in Sec. 1.4(d)(1) and does not include S-
signatures. Section 1.4(e) specifies when an original handwritten
signature is required. A handwritten signature can be an original or a
copy thereof, except when an original handwritten signature is
required, as set forth in Sec. 1.4(e). See MPEP Sec. 502.02. Unless
Sec. 1.4(e) is applicable, an S-signature, as provided for in Sec.
1.4(d)(2), may be used.
3. Juristic Entity (Sec. 1.31)
Comment 57: One comment stated that proposed Sec. 1.33(f) seems to
allow a juristic entity to sign documents such as terminal disclaimers
and statements under Sec. 3.73(b) because of the language ``unless
otherwise specified,'' which is contrary to the preamble discussion
which stated that all papers submitted on behalf of a juristic entity
must be signed by a patent practitioner.
Response: Section 1.33(b)(3) contains the language of proposed
Sec. 1.33(f). Section 3.73(c) now contains the provisions for
establishing ownership in a patent matter including the required
statement. Section 1.321 provides for a terminal disclaimer to be
signed by the applicant or an attorney or agent of record. Thus, an
assignee who is the applicant may sign a terminal disclaimer. Section
3.73(d) provides for a statement under Sec. 3.73(c) to be signed by a
person authorized to act on behalf of the assignee.
4. Correspondence Address (Sec. 1.33)
Comment 58: One comment suggested that Sec. 1.33(a) be amended to
state that the correspondence address must be provided in an
application data sheet since the Office's application data sheet form
(PTO/SB/14) already has a field for correspondence address.
Response: The Office encourages applicants to provide an
application data sheet containing a correspondence address, but
applicants may also provide a correspondence address in another paper
(e.g., a transmittal letter) accompanying the application, particularly
where an application data sheet is not being filed with the
application. The Office needs to be able to communicate with applicants
even when an application data sheet is not submitted.
Comment 59: One comment suggested maintaining the language of
current Sec. 1.33(a) to state that where more than one correspondence
address is specified in a single paper or multiple papers submitted on
one day, the Office will use a Customer Number for the correspondence
address over a typed correspondence address. The comment indicated that
the Office has used a different correspondence where a Customer Number
``has been properly presented in the filings associated with an
application.''
Response: The Office will generally select the address associated
with a Customer Number over a typed correspondence address when more
than one correspondence address is specified in a paper or papers
submitted on the same day. The Office, however, prefers not to be
required by rule to select the Customer Number since there may be
situations where it is clear that the Customer Number given is not the
intended or current correspondence address. Thus, the Office requires
some flexibility in this regard.
Comment 60: One comment suggested that to ensure prompt processing
of correspondence addresses, a practitioner using private PAIR should
have the ability to input a new/correct correspondence address which
becomes effective immediately upon submission.
Response: The Office is currently considering changes to the PAIR
system that may include the ability of a patent practitioner of record
to change the correspondence address in an application. The Office
would notify the public of any changes to the PAIR system via a notice
on the Office's Internet web site.
5. Person Making Declaration (Sec. 1.64)
Comment 61: One comment suggested that: (1) Sec. 1.64(a) which
states that the declaration ``must be made by all of the actual
inventors, except as provided for in Sec. Sec. 1.42, 1.43, 1.47, or
1.67,'' be revised to employ the statutory language of 35 U.S.C. 115,
that ``each individual who is the inventor or a joint inventor of a
claimed invention;'' (2) the portion of Sec. 1.64(b) that states
``[i]f the person making the oath or declaration is not the inventor,
the declaration shall state * * * '' should be removed as only an
inventor or joint inventor may execute an oath or declaration; and (3)
the requirement for the residence of non-
[[Page 48809]]
inventors who sign should be removed. Another comment suggested that
Sec. 1.64 be amended to reflect that a single oath or declaration
document is not required and to eliminate the requirement for the
residence and mailing address of the legal representative.
Response: In response to the comments, the provisions of former
Sec. 1.64 have been eliminated. Section 1.64 now provides for a
substitute statement in lieu of an oath or declaration and requires the
residence and mailing of address of the person signing the substitute
statement. The Office needs this information for identification
purposes and to be able to communicate with the person executing the
substitute statement in the event that this becomes necessary.
6. Noncompliant Declarations (Sec. 1.67)
Comment 62: One comment stated that proposed Sec. 1.67 included a
critical misconception that a declaration may be made by someone other
than the inventor. Additionally, the comment stated that it is unclear
how a deficiency or inaccuracy relating to fewer than all the
applicants could be cured by an inventor's declaration. Another comment
stated that Sec. 1.67 should be amended to reflect that a single oath
or declaration document is not required.
Response: Initially, it should be noted that Sec. 1.67 is directed
to supplemental oaths or declarations and provides a mechanism for
applicants to correct deficiencies or inaccuracies present in an
earlier-filed inventor's oath or declaration. Section 1.67, in this
final rule, prohibits the Office from requiring a person who has
executed an oath or declaration that is in compliance with 35 U.S.C.
115 and Sec. 1.63 or Sec. 1.162 to provide an additional inventor's
oath or declaration for the application. However, the Office is not
prohibited from requiring a new oath or declaration in compliance with
35 U.S.C. 115 and Sec. 1.63 where the oath or declaration that was
submitted does not comply with 35 U.S.C. 115 and Sec. 1.63. The Office
notes that former Sec. 1.47(b) permitted an assignee to sign the oath
or declaration for the nonsigning inventor where no inventors were
available. The assignee would simply make the statements in the oath or
declaration on information and belief. See former Sec. 1.64(b).
Section 1.63(f), in this final rule, provides that any reference to the
inventor's oath or declaration in this chapter means the oaths,
declarations, or substitute statements that have been collectively
executed by or with respect to all of the joint inventors. Accordingly,
a single oath or declaration document is not required under Sec. 1.63
or Sec. 1.67. Since Sec. 1.63 is amended to only require that the
oath or declaration identify the inventor or joint inventor executing
the oath or declaration rather, than identifying the entire inventive
entity, Sec. 1.67 no longer refers to a deficiency or inaccuracy
relating to fewer than all of the inventors or applicants.
7. Statement Under Sec. 3.73
Comment 63: One comment supported the proposed change to Sec.
3.73, but suggested a modification of Sec. 3.73(b). The comment noted
the difficulties practitioners face in attempting to reproduce reel and
frame numbers, including time, effort and the potential for
typographical errors from the hand-keying required when form PTO/SB/96
is completed, and the need for Office personnel to check the
information character by character. The comment suggested that these
efforts can be limited by permitting attachment of a copy of the
Abstract of Title or Notice of Recordation where they contain the reel
and frame numbers.
Response: Section 3.73(c)(1)(i) requires documentary evidence of a
chain of title from the original owner to the assignee. A copy of an
executed assignment is only one example of the type of documentary
evidence that may be submitted. Other types of documentary evidence may
be submitted. An Abstract of Title or Notice of Recordation would be
insufficient documentary evidence since any person can submit documents
for recordation to Assignment Recordation Branch, therefore an Abstract
of Title may list extraneous or erroneous documents unrelated to the
chain of title.
Comment 64: One comment stated that, with respect to proposed Sec.
3.73(c)(3), the applicants should be allowed to also file a copy of a
statement under Sec. 3.73(b) that was originally filed in a
provisional application in a nonprovisional application that claims
benefit of the provisional application.
Response: Section 3.73 does not provide for the filing of a copy of
a statement under Sec. 3.73(c) in a nonprovisional application that
was originally filed in a prior application, such as a provisional
application whose benefit is being claimed in the nonprovisional
application. Generally, there is no need to file a Sec. 3.73(c)
statement in a provisional application and such statements are not
usually filed in provisional applications as such applications are not
examined and do not undergo prosecution. Furthermore, where an assignee
has filed such a statement in the provisional application, the assignee
would presumably be the applicant filing the nonprovisional
application. An assignee who is the applicant who filed the application
need not to file a Sec. 3.73(c) statement.
Comment 65: One comment stated that, with respect to proposed Sec.
3.73(c)(3), if a statement under Sec. 3.73(b) in the earlier
application is from an assignee, it should not be required that the
inventorship of the continuing application be the same as or less than
that of the earlier application, if the newly added inventors have also
assigned, or are under an obligation to assign, to the same assignee
and the assignment is recorded at the Office.
Response: Section 3.73 does not provide for the filing of a copy of
a statement under Sec. 3.73(c) in a continuing application that was
originally filed in the prior application. Where an assignee has filed
a statement under Sec. 3.73(c) in a prior application, the assignee
may file the continuing application as the applicant and would not need
to file a Sec. 3.73(c) statement.
Comment 66: One comment suggested that the Office simplify the
process relating to the power of attorney from an assignee such that
the power of attorney document(s) may be filed concurrently with the
filing of patent application documents. The comment noted that the
Office's form (PTO/SB/96) requires entry of specific application data
which are only available after filing of the patent application.
Response: An assignee who is the applicant will not need to comply
with the procedure in Sec. Sec. 3.71 and 3.73, including filing a
Sec. 3.73(c) statement (e.g., Form PTO/SB/96). The assignee will only
need to identify him or herself as the applicant and submit a power of
attorney. Thus, the assignee will be able to file the power of attorney
document(s) concurrently with the patent application documents even
though he or she does not have an application number for the
application. An assignee who did not file the application and thus is
not the original applicant would need to file a Sec. 3.73(c) statement
to become the applicant and take over prosecution of the application.
See Sec. Sec. 1.46(c), 3.71, and 3.73.
8. Lack of Deceptive Intent
Comment 67: One comment expressed concern about the deletion of the
``lack of deceptive intent'' clause. One comment suggested that
notwithstanding the acknowledgement that willful false statements are
punishable by fine or imprisonment, keeping the ``without deceptive
intention'' in the statute may be a good idea. The comment noted that
there may be semantic differences between ``false
[[Page 48810]]
statement'' and ``deceptive intention'' that retaining the language may
help clarify.
Response: Section 20 of the AIA amended 35 U.S.C. 116, 184, 251,
and 256 (as well as other statutes that do not require corresponding
rule changes) to eliminate the ``without any deceptive intention''
clauses. The changes to the rules at issue simply implement the changes
to 35 U.S.C. 116, 184, 251, and 256 in section 20 of the AIA. As
discussed previously, this should not be taken as an endorsement for
applicants and inventors to act with ``deceptive intention'' in
proceedings before the Office, as 35 U.S.C. 115(i) requires that any
declaration or statement filed pursuant to 35 U.S.C. 115 contain an
acknowledgement that any willful false statement made in the
declaration or statement is punishable under 18 U.S.C. 1001 by fine or
imprisonment of not more than five (5) years, or both.
Rulemaking Considerations
A. Administrative Procedure Act
The primary changes in this final rule implement the inventor's
oath or declaration provisions of the AIA. This final rule changes the
rules of practice that concern the procedure for applying for a patent,
namely, how an application is to identify the applicant for patent, the
statements required in the inventor's oath or declaration required by
35 U.S.C. 115 for a patent application (including the oath or
declaration for a reissue application), the manner of presenting claims
for priority to or the benefit of prior-filed applications under 35
U.S.C. 119, 120, 121, or 365, and the procedures for prosecution of an
application by an assignee. The changes in this final rule do not alter
the substantive criteria of patentability. Therefore, the changes in
this final rule involve rules of agency practice and procedure, and/or
interpretive rules. See Bachow Commc'ns., Inc. v. FCC, 237 F.3d 683,
690 (D.C. Cir. 2001) (rules governing an application process are
procedural under the Administrative Procedure Act); Inova Alexandria
Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling
appeals were procedural where they did not change the substantive
standard for reviewing claims); Nat'l Org. of Veterans' Advocates v.
Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule
that clarifies interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not
require notice and comment rulemaking for ``interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice.'') (quoting 5 U.S.C. 553(b)(A)). The Office,
however, published proposed changes and a Regulatory Flexibility Act
certification for comment as it sought the benefit of the public's
views on the Office's proposed implementation of this provision of the
AIA.
B. Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 or any other law, neither a
regulatory flexibility analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5
U.S.C. 603.
In addition, for the reasons set forth herein, the Deputy General
Counsel for General Law of the United States Patent and Trademark
Office has certified to the Chief Counsel for Advocacy of the Small
Business Administration that changes in this final rule will not have a
significant economic impact on a substantial number of small entities.
See 5 U.S.C. 605(b).
This final rule changes the rules of practice to implement sections
4 and 20 of the AIA, which provide changes to the inventor's oath or
declaration and the filing of an application by the assignee as the
applicant. The primary impact of the changes in this final rule is the
streamlining of the requirements for oaths and declarations and the
simplification of the filing of an application by the assignee as the
applicant. The burden to all entities, including small entities,
imposed by the changes in this final rule is significantly less than
the burden imposed by the former regulations in most situations, and is
no more than a minor addition to that of the former regulations in any
situation. The change to the manner of presenting claims for priority
to or the benefit of prior-filed applications under 35 U.S.C. 119, 120,
121, or 365 will not have a significant economic impact on a
substantial number of small entities as an application data sheet is
easy to prepare and use, and the majority of patent applicants already
submit an application data sheet with the patent application. The
change to reissue oaths or declarations will not have a significant
economic impact on a substantial number of small entities as reissue is
sought by the patentee for fewer than 1,200 of the 1.2 million patents
in force each year, and a reissue applicant already needs to know
whether claims are being broadened to comply with the requirements of
35 U.S.C. 251. The change to the procedures for prosecution of an
application by an assignee will not have a significant economic impact
on a substantial number of small entities as it is rare for a juristic
entity to attempt to prosecute a patent application pro se. Therefore,
the changes in this final rule will not have a significant economic
impact on a substantial number of small entities.
C. Executive Order 12866 (Regulatory Planning and Review)
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory Review)
The Office has complied with Executive Order 13563. Specifically,
the Office has, to the extent feasible and applicable: (1) Made a
reasoned determination that the benefits justify the costs of the rule;
(2) tailored the rule to impose the least burden on society consistent
with obtaining the regulatory objectives; (3) selected a regulatory
approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6)
involved the public in an open exchange of information and perspectives
among experts in relevant disciplines, affected stakeholders in the
private sector and the public as a whole, and provided online access to
the rulemaking docket; (7) attempted to promote coordination,
simplification and harmonization across government agencies and
identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific
and technological information and processes.
E. Executive Order 13132 (Federalism)
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation)
This rulemaking will not: (1) Have substantial direct effects on
one or more Indian tribes; (2) impose substantial direct compliance
costs on Indian tribal governments; or (3) preempt tribal law.
Therefore, a tribal summary impact statement is not required under
Executive Order 13175 (Nov. 6, 2000).
[[Page 48811]]
G. Executive Order 13211 (Energy Effects)
This rulemaking is not a significant energy action under Executive
Order 13211 because this rulemaking is not likely to have a significant
adverse effect on the supply, distribution, or use of energy.
Therefore, a Statement of Energy Effects is not required under
Executive Order 13211 (May 18, 2001).
H. Executive Order 12988 (Civil Justice Reform)
This rulemaking meets applicable standards to minimize litigation,
eliminate ambiguity, and reduce burden as set forth in sections 3(a)
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children)
This rulemaking does not concern an environmental risk to health or
safety that may disproportionately affect children under Executive
Order 13045 (Apr. 21, 1997).
J. Executive Order 12630 (Taking of Private Property)
This rulemaking will not effect a taking of private property or
otherwise have taking implications under Executive Order 12630 (Mar.
15, 1988).
K. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), the
United States Patent and Trademark Office will submit a report
containing this final rule and other required information to the United
States Senate, the United States House of Representatives, and the
Comptroller General of the Government Accountability Office. The
changes in this final rule are not expected to result in an annual
effect on the economy of 100 million dollars or more, a major increase
in costs or prices, or significant adverse effects on competition,
employment, investment, productivity, innovation, or the ability of
United States-based enterprises to compete with foreign-based
enterprises in domestic and export markets. Therefore, this final rule
is not a ``major rule'' as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995
The changes in this rulemaking do not involve a Federal
intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of 100 million dollars
(as adjusted) or more in any one year, or a Federal private sector
mandate that will result in the expenditure by the private sector of
100 million dollars (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy Act
This rulemaking will not have any effect on the quality of
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act
The requirements of section 12(d) of the National Technology
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not
applicable because this rulemaking does not contain provisions which
involve the use of technical standards.
O. Paperwork Reduction Act
This rulemaking involves information collection requirements which
are subject to review by the Office of Management and Budget (OMB)
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The
collection of information involved in this rulemaking has been reviewed
and previously approved by OMB under OMB Control Numbers 0651-0032 and
0651-0035. The primary impact of the changes in this notice is the
streamlining of the requirements for oaths and declarations and the
simplification of the filing of an application by the assignee when an
inventor cannot or will not execute an oath or declaration. The Office
is not resubmitting an information collection package to OMB for its
review and approval because the changes in this rulemaking do not
change patent fees or change the information collection requirements
(the estimated number of respondents, time per response, total annual
respondent burden hours, or total annual respondent cost burden)
associated with the information collections approved under OMB Control
Numbers 0651-0032 and 0651-0035.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act, unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Inventions and patents,
Reporting and recordkeeping requirements, Small businesses.
37 CFR Part 3
Administrative practice and procedure, Patents, Trademarks
37 CFR Part 5
Classified information, Foreign relations, Inventions and patents.
37 CFR Part 10
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
37 CFR Part 41
Administrative practice and procedure, Inventions and patents,
Lawyers.
For the reasons set forth in the preamble, 37 CFR parts 1, 3, 5, 10
and 41 are amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
0
2. Section 1.1 is amended by revising paragraph (e) to read as follows:
Sec. 1.1 Addresses for non-trademark correspondence with the United
States Patent and Trademark Office.
* * * * *
(e) Patent term extension. All applications for extension of patent
term under 35 U.S.C. 156 and any communications relating thereto
intended for the United States Patent and Trademark Office should be
additionally marked ``Mail Stop Hatch-Waxman PTE.'' When appropriate,
the communication should also be marked to the attention of a
particular individual, as where a decision has been rendered.
* * * * *
0
3. Section 1.4 is amended by revising paragraph (e) to read as follows:
Sec. 1.4 Nature of correspondence and signature requirements.
* * * * *
(e) The following correspondence must be submitted with an original
handwritten signature personally signed in permanent dark ink or its
equivalent:
(1) Correspondence requiring a person's signature and relating to
registration to practice before the Patent
[[Page 48812]]
and Trademark Office in patent cases, enrollment and disciplinary
investigations, or disciplinary proceedings; and
(2) Payments by credit cards where the payment is not being made
via the Office's electronic filing systems.
* * * * *
0
4. Section 1.5 is amended by revising paragraph (a) to read as follows:
Sec. 1.5 Identification of patent, patent application, or patent-
related proceeding.
(a) No correspondence relating to an application should be filed
prior to receipt of the application number from the Patent and
Trademark Office. When a letter directed to the Patent and Trademark
Office concerns a previously filed application for a patent, it must
identify on the top page in a conspicuous location, the application
number (consisting of the series code and the serial number; e.g., 07/
123,456), or the serial number and filing date assigned to that
application by the Patent and Trademark Office, or the international
application number of the international application. Any correspondence
not containing such identification will be returned to the sender where
a return address is available. The returned correspondence will be
accompanied with a cover letter which will indicate to the sender that
if the returned correspondence is resubmitted to the Patent and
Trademark Office within two weeks of the mail date on the cover letter,
the original date of receipt of the correspondence will be considered
by the Patent and Trademark Office as the date of receipt of the
correspondence. Applicants may use either the Certificate of Mailing or
Transmission procedure under Sec. 1.8 or the Express Mail procedure
under Sec. 1.10 for resubmissions of returned correspondence if they
desire to have the benefit of the date of deposit in the United States
Postal Service. If the returned correspondence is not resubmitted
within the two-week period, the date of receipt of the resubmission
will be considered to be the date of receipt of the correspondence. The
two-week period to resubmit the returned correspondence will not be
extended. In addition to the application number, all letters directed
to the Patent and Trademark Office concerning applications for patent
should also state the name of the first listed inventor, the title of
the invention, the date of filing the same, and, if known, the group
art unit or other unit within the Patent and Trademark Office
responsible for considering the letter and the name of the examiner or
other person to which it has been assigned.
* * * * *
0
5. Section 1.9 is amended by revising paragraphs (a) and (b) to read as
follows:
Sec. 1.9 Definitions.
(a)(1) A national application as used in this chapter means a U.S.
application for patent which was either filed in the Office under 35
U.S.C. 111, or an international application filed under the Patent
Cooperation Treaty in which the basic national fee under 35 U.S.C.
41(a)(1)(F) has been paid.
(2) A provisional application as used in this chapter means a U.S.
national application for patent filed in the Office under 35 U.S.C.
111(b).
(3) A nonprovisional application as used in this chapter means a
U.S. national application for patent which was either filed in the
Office under 35 U.S.C. 111(a), or an international application filed
under the Patent Cooperation Treaty in which the basic national fee
under 35 U.S.C. 41(a)(1)(F) has been paid.
(b) An international application as used in this chapter means an
international application for patent filed under the Patent Cooperation
Treaty prior to entering national processing at the Designated Office
stage.
* * * * *
0
6. Section 1.12 is amended by revising paragraphs (b) and (c)(2) to
read as follows:
Sec. 1.12 Assignment records open to public inspection.
* * * * *
(b) Assignment records, digests, and indexes relating to any
pending or abandoned patent application, which is open to the public
pursuant to Sec. 1.11 or for which copies or access may be supplied
pursuant to Sec. 1.14, are available to the public. Copies of any
assignment records, digests, and indexes that are not available to the
public shall be obtainable only upon written authority of an inventor,
the applicant, the assignee or an assignee of an undivided part
interest, or a patent practitioner of record, or upon a showing that
the person seeking such information is a bona fide prospective or
actual purchaser, mortgagee, or licensee of such application, unless it
shall be necessary to the proper conduct of business before the Office
or as provided in this part.
(c) * * *
(2) Include written authority granting access to the member of the
public to the particular assignment records from an inventor, the
applicant, the assignee or an assignee of an undivided part interest,
or a patent practitioner of record.
* * * * *
0
7. Section 1.14 is amended by revising paragraphs (c) and (f) to read
as follows;
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(c) Power to inspect a pending or abandoned application. Access to
an application may be provided to any person if the application file is
available, and the application contains written authority (e.g., a
power to inspect) granting access to such person. The written authority
must be signed by:
(1) The applicant;
(2) A patent practitioner of record;
(3) The assignee or an assignee of an undivided part interest;
(4) The inventor or a joint inventor; or
(5) A registered attorney or agent named in the papers accompanying
the application papers filed under Sec. 1.53 or the national stage
documents filed under Sec. 1.495, if a power of attorney has not been
appointed under Sec. 1.32.
* * * * *
(f) Notice to inventor of the filing of an application. The Office
may publish notice in the Official Gazette as to the filing of an
application on behalf of an inventor by a person who otherwise shows
sufficient propriety interest in the matter.
* * * * *
0
8. Section 1.16 is amended by revising paragraph (f) to read as
follows:
Sec. 1.16 National application filing, search, and examination fees.
* * * * *
(f) Surcharge for filing any of the basic filing fee, the search
fee, the examination fee, or the inventor's oath or declaration on a
date later than the filing date of the application, except provisional
applications:
By a small entity (Sec. 1.27(a)) $65.00
By other than a small entity $130.00
* * * * *
0
9. Section 1.17 is amended by revising paragraphs (g) and (i) to read
as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(g) For filing a petition under one of the following sections which
refers to this paragraph: $200.00.
[[Page 48813]]
Sec. 1.12--for access to an assignment record.
Sec. 1.14--for access to an application.
Sec. 1.46--for filing an application on behalf of an inventor by a
person who otherwise shows sufficient proprietary interest in the
matter.
Sec. 1.59--for expungement of information.
Sec. 1.103(a)--to suspend action in an application.
Sec. 1.136(b)--for review of a request for extension for extension of
time when the provisions of Sec. 1.136(a) are not available.
Sec. 1.295--for review of refusal to publish a statutory invention
registration.
Sec. 1.296--to withdraw a request for publication of a statutory
invention registration filed on or after the date the notice of intent
to publish issued.
Sec. 1.377--for review of decision refusing to accept and record
payment of a maintenance fee filed prior to expiration of a patent.
Sec. 1.550(c)--for patent owner requests for extension of time in ex
parte reexamination proceedings.
Sec. 1.956--for patent owner requests for extension of time in inter
partes reexamination proceedings.
Sec. 5.12--for expedited handling of a foreign filing license.
Sec. 5.15--for changing the scope of a license.
Sec. 5.25--for retroactive license.
* * * * *
(i) Processing fee for taking action under one of the following
sections which refers to this paragraph: $130.00.
Sec. 1.28(c)(3)--for processing a non-itemized fee deficiency based
on an error in small entity status.
Sec. 1.41(b)--for supplying the name or names of the inventor or
joint inventors in an application without either an application data
sheet or the inventor's oath or declaration, except in provisional
applications.
Sec. 1.48--for correcting inventorship, except in provisional
applications.
Sec. 1.52(d)--for processing a nonprovisional application filed with
a specification in a language other than English.
Sec. 1.53(c)(3)--to convert a provisional application filed under
Sec. 1.53(c) into a nonprovisional application under Sec. 1.53(b).
Sec. 1.55--for entry of late priority papers.
Sec. 1.71(g)(2)--for processing a belated amendment under Sec.
1.71(g).
Sec. 1.103(b)--for requesting limited suspension of action, continued
prosecution application for a design patent (Sec. 1.53(d)).
Sec. 1.103(c)--for requesting limited suspension of action, request
for continued examination (Sec. 1.114).
Sec. 1.103(d)--for requesting deferred examination of an application.
Sec. 1.217--for processing a redacted copy of a paper submitted in
the file of an application in which a redacted copy was submitted for
the patent application publication.
Sec. 1.221--for requesting voluntary publication or republication of
an application.
Sec. 1.291(c)(5)--for processing a second or subsequent protest by
the same real party in interest.
Sec. 3.81--for a patent to issue to assignee, assignment submitted
after payment of the issue fee.
* * * * *
0
10. Section 1.27 is amended by revising paragraph (c)(2) to read as
follows:
Sec. 1.27 Definition of small entities and establishing status as a
small entity to permit payment of small entity fees; when a
determination of entitlement to small entity status and notification of
loss of entitlement to small entity status are required; fraud on the
Office.
* * * * *
(c) * * *
(2) Parties who can sign the written assertion. The written
assertion can be signed by:
(i) The applicant (Sec. 1.42 or Sec. 1.421);
(ii) A patent practitioner of record or a practitioner acting in a
representative capacity under Sec. 1.34;
(iii) The inventor or a joint inventor, if the inventor is the
applicant; or
(iv) The assignee.
* * * * *
0
11. Section 1.31 is revised to read as follows:
Sec. 1.31 Applicant may be represented by one or more patent
practitioners or joint inventors.
An applicant for patent may file and prosecute the applicant's own
case, or the applicant may give power of attorney so as to be
represented by one or more patent practitioners or joint inventors,
except that a juristic entity (e.g., organizational assignee) must be
represented by a patent practitioner even if the juristic entity is the
applicant. The Office cannot aid in the selection of a patent
practitioner.
0
12. Section 1.32 is amended by revising paragraphs (a)(2), (a)(3),
(a)(4) and (b) and adding paragraphs (a)(6), (d) and (e) to read as
follows:
Sec. 1.32 Power of attorney.
(a) * * *
(2) Power of attorney means a written document by which a principal
authorizes one or more patent practitioners or joint inventors to act
on the principal's behalf.
(3) Principal means the applicant (Sec. 1.42) for an application
for patent and the patent owner for a patent, including a patent in a
supplemental examination or reexamination proceeding. The principal
executes a power of attorney designating one or more patent
practitioners or joint inventors to act on the principal's behalf.
(4) Revocation means the cancellation by the principal of the
authority previously given to a patent practitioner or joint inventor
to act on the principal's behalf.
* * * * *
(6) Patent practitioner of record means a patent practitioner who
has been granted a power of attorney in an application, patent, or
other proceeding in compliance with paragraph (b) of this section. The
phrases practitioner of record and attorney or agent of record also
mean a patent practitioner who has been granted a power of attorney in
an application, patent, or other proceeding in compliance with
paragraph (b) of this section.
(b) A power of attorney must:
(1) Be in writing;
(2) Name one or more representatives in compliance with paragraph
(c) of this section;
(3) Give the representative power to act on behalf of the
principal; and
(4) Be signed by the applicant for patent (Sec. 1.42) or the
patent owner. A
[[Page 48814]]
patent owner who was not the applicant under Sec. 1.46 must appoint
any power of attorney in compliance with Sec. Sec. 3.71 and 3.73 of
this chapter.
* * * * *
(d) A power of attorney from a prior national application for which
benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in a continuing
application may have effect in the continuing application if a copy of
the power of attorney from the prior application is filed in the
continuing application unless:
(1) The power of attorney was granted by the inventor; and
(2) The continuing application names an inventor who was not named
as an inventor in the prior application.
(e) If the power of attorney was granted by the originally named
inventive entity, and an added inventor pursuant to Sec. 1.48 does not
provide a power of attorney consistent with the power of attorney
granted by the originally named inventive entity, the addition of the
inventor results in the loss of that power of attorney upon grant of
the Sec. 1.48 request. This provision does not preclude a practitioner
from acting pursuant to Sec. 1.34, if applicable.
0
13. Section 1.33 is amended by revising paragraphs (a) and (b) and
adding paragraphs (f) and (g) to read as follows:
Sec. 1.33 Correspondence respecting patent applications, patent
reexamination proceedings, and other proceedings.
(a) Correspondence address and daytime telephone number. When
filing an application, a correspondence address must be set forth in
either an application data sheet (Sec. 1.76), or elsewhere, in a
clearly identifiable manner, in any paper submitted with an application
filing. If no correspondence address is specified, the Office may treat
the mailing address of the first named inventor (if provided, see
Sec. Sec. 1.76(b)(1) and 1.63(b)(2)) as the correspondence address.
The Office will direct, or otherwise make available, all notices,
official letters, and other communications relating to the application
to the person associated with the correspondence address. For
correspondence submitted via the Office's electronic filing system,
however, an electronic acknowledgment receipt will be sent to the
submitter. The Office will generally not engage in double
correspondence with an applicant and a patent practitioner, or with
more than one patent practitioner except as deemed necessary by the
Director. If more than one correspondence address is specified, the
Office will select one of the specified addresses for use as the
correspondence address and, if given, may select the address associated
with a Customer Number over a typed correspondence address. For the
party to whom correspondence is to be addressed, a daytime telephone
number should be supplied in a clearly identifiable manner and may be
changed by any party who may change the correspondence address. The
correspondence address may be changed by the parties set forth in
paragraph (b)(1) or (b)(3) of this section. Prior to the appointment of
any power of attorney under Sec. 1.32(b), the correspondence address
may also be changed by any patent practitioner named in the application
transmittal papers who acts in a representative capacity under the
provisions of Sec. 1.34.
(b) Amendments and other papers. Amendments and other papers,
except for written assertions pursuant to Sec. 1.27(c)(2)(iii) or
(c)(2)(iv), filed in the application must be signed by:
(1) A patent practitioner of record;
(2) A patent practitioner not of record who acts in a
representative capacity under the provisions of Sec. 1.34; or
(3) The applicant (Sec. 1.42). Unless otherwise specified, all
papers submitted on behalf of a juristic entity must be signed by a
patent practitioner.
* * * * *
(f) Where application papers from a prior application are used in a
continuing application and the correspondence address was changed
during the prosecution of the prior application, an application data
sheet or separate paper identifying the correspondence address to be
used for the continuing application must be submitted. Otherwise, the
Office may not recognize the change of correspondence address effected
during the prosecution of the prior application.
(g) A patent practitioner acting in a representative capacity whose
correspondence address is the correspondence address of record in an
application may change the correspondence address after the patent has
issued, provided that the change of correspondence address is
accompanied by a statement that notice has been given to the patentee
or owner.
0
14. Section 1.36 is amended by revising paragraph (a) to read as
follows:
Sec. 1.36 Revocation of power of attorney; withdrawal of patent
attorney or agent.
(a) A power of attorney, pursuant to Sec. 1.32(b), may be revoked
at any stage in the proceedings of a case by the applicant or patent
owner. A power of attorney to the patent practitioners associated with
a Customer Number will be treated as a request to revoke any powers of
attorney previously given. Fewer than all of the applicants (or fewer
than all patent owners in a supplemental examination or reexamination
proceeding) may revoke the power of attorney only upon a showing of
sufficient cause, and payment of the petition fee set forth in Sec.
1.17(f). A patent practitioner will be notified of the revocation of
the power of attorney. Where power of attorney is given to the patent
practitioners associated with a Customer Number (Sec. 1.32(c)(2)), the
practitioners so appointed will also be notified of the revocation of
the power of attorney when the power of attorney to all of the
practitioners associated with the Customer Number is revoked. The
notice of revocation will be mailed to the correspondence address for
the application (Sec. 1.33) in effect before the revocation. An
assignment will not of itself operate as a revocation of a power
previously given, but the assignee may become the applicant under Sec.
1.46(c) and revoke any previous power of attorney and grant a power of
attorney as provided in Sec. 1.32(b).
* * * * *
0
15. Section 1.41 is revised to read as follows:
Sec. 1.41 Inventorship.
(a) An application must include, or be amended to include, the name
of the inventor for any invention claimed in the application.
(b) The inventorship of a nonprovisional application under 35
U.S.C. 111(a) is the inventor or joint inventors set forth in the
application data sheet in accordance with Sec. 1.76 filed before or
concurrently with the inventor's oath or declaration. If an application
data sheet is not filed before or concurrently with the inventor's oath
or declaration, the inventorship is the inventor or joint inventors set
forth in the inventor's oath or declaration, except as provided for in
Sec. Sec. 1.53(d)(4) and 1.63(d). Once an application data sheet or
the inventor's oath or declaration is filed in a nonprovisional
application, any correction of inventorship must be pursuant to Sec.
1.48. If neither an application data sheet nor the inventor's oath or
declaration is filed during the pendency of a nonprovisional
application, the inventorship is the inventor or joint inventors set
forth in the application papers filed pursuant to Sec. 1.53(b), unless
the applicant files a paper, including the processing fee set forth in
Sec. 1.17(i), supplying the name or names of the inventor or joint
inventors.
[[Page 48815]]
(c) The inventorship of a provisional application is the inventor
or joint inventors set forth in the cover sheet as prescribed by Sec.
1.51(c)(1). Once a cover sheet as prescribed by Sec. 1.51(c)(1) is
filed in a provisional application, any correction of inventorship must
be pursuant to Sec. 1.48. If a cover sheet as prescribed by Sec.
1.51(c)(1) is not filed during the pendency of a provisional
application, the inventorship is the inventor or joint inventors set
forth in the application papers filed pursuant to Sec. 1.53(c), unless
applicant files a paper including the processing fee set forth in Sec.
1.17(q), supplying the name or names of the inventor or joint
inventors.
(d) In a nonprovisional application under 35 U.S.C. 111(a) filed
without an application data sheet or the inventor's oath or
declaration, or in a provisional application filed without a cover
sheet as prescribed by Sec. 1.51(c)(1), the name and residence of each
person believed to be an actual inventor should be provided when the
application papers pursuant to Sec. 1.53(b) or Sec. 1.53(c) are
filed.
(e) The inventorship of an international application entering the
national stage under 35 U.S.C. 371 is the inventor or joint inventors
set forth in the application data sheet in accordance with Sec. 1.76
filed with the initial submission under 35 U.S.C. 371. Unless the
initial submission under 35 U.S.C. 371 is accompanied by an application
data sheet in accordance with Sec. 1.76 setting forth the inventor or
joint inventors, the inventorship is the inventor or joint inventors
set forth in the international application, which includes any change
effected under PCT Rule 92 bis.
0
16. Section 1.42 is revised to read as follows:
Sec. 1.42 Applicant for patent.
(a) The word ``applicant'' when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a
patent as provided in Sec. Sec. 1.43, 1.45, or 1.46.
(b) If a person is applying for a patent as provided in Sec. 1.46,
the word ``applicant'' refers to the assignee, the person to whom the
inventor is under an obligation to assign the invention, or the person
who otherwise shows sufficient proprietary interest in the matter, who
is applying for a patent under Sec. 1.46 and not the inventor.
(c) If fewer than all joint inventors are applying for a patent as
provided in Sec. 1.45, the phrase ``the applicant'' means the joint
inventors who are applying for the patent without the omitted
inventor(s).
(d) Any person having authority may deliver an application and fees
to the Office on behalf of the applicant. However, an oath or
declaration, or substitute statement in lieu of an oath or declaration,
may be executed only in accordance with Sec. 1.63 or 1.64, a
correspondence address may be provided only in accordance with Sec.
1.33(a), and amendments and other papers must be signed in accordance
with Sec. 1.33(b).
(e) The Office may require additional information where there is a
question concerning ownership or interest in an application, and a
showing may be required from the person filing the application that the
filing was authorized where such authorization comes into question.
0
17. Section 1.43 is revised to read as follows:
Sec. 1.43 Application for patent by a legal representative of a
deceased or legally incapacitated inventor.
If an inventor is deceased or under legal incapacity, the legal
representative of the inventor may make an application for patent on
behalf of the inventor. If an inventor dies during the time intervening
between the filing of the application and the granting of a patent
thereon, the letters patent may be issued to the legal representative
upon proper intervention. See Sec. 1.64 concerning the execution of a
substitute statement by a legal representative in lieu of an oath or
declaration.
0
18. Section 1.45 is revised to read as follows:
Sec. 1.45 Application for patent by joint inventors.
(a) Joint inventors must apply for a patent jointly, and each must
make an inventor's oath or declaration as required by Sec. 1.63,
except as provided for in Sec. 1.64. If a joint inventor refuses to
join in an application for patent or cannot be found or reached after
diligent effort, the other joint inventor or inventors may make the
application for patent on behalf of themselves and the omitted
inventor. See Sec. 1.64 concerning the execution of a substitute
statement by the other joint inventor or inventors in lieu of an oath
or declaration.
(b) Inventors may apply for a patent jointly even though:
(1) They did not physically work together or at the same time;
(2) Each inventor did not make the same type or amount of
contribution; or
(3) Each inventor did not make a contribution to the subject matter
of every claim of the application.
(c) If multiple inventors are named in a nonprovisional
application, each named inventor must have made a contribution,
individually or jointly, to the subject matter of at least one claim of
the application and the application will be considered to be a joint
application under 35 U.S.C. 116. If multiple inventors are named in a
provisional application, each named inventor must have made a
contribution, individually or jointly, to the subject matter disclosed
in the provisional application and the provisional application will be
considered to be a joint application under 35 U.S.C. 116.
0
19. Section 1.46 is revised to read as follows:
Sec. 1.46 Application for patent by an assignee, obligated assignee,
or a person who otherwise shows sufficient proprietary interest in the
matter.
(a) A person to whom the inventor has assigned or is under an
obligation to assign the invention may make an application for patent.
A person who otherwise shows sufficient proprietary interest in the
matter may make an application for patent on behalf of and as agent for
the inventor on proof of the pertinent facts and a showing that such
action is appropriate to preserve the rights of the parties.
(b) If an application under 35 U.S.C. 111 is made by a person other
than the inventor under paragraph (a) of this section, the application
must contain an application data sheet under Sec. 1.76 specifying in
the applicant information section (Sec. 1.76(b)(7)) the assignee,
person to whom the inventor is under an obligation to assign the
invention, or person who otherwise shows sufficient proprietary
interest in the matter. If the application is the national stage of an
international application, the person who is identified in the
international stage as an applicant for the United States is the person
specified as the original applicant for the national stage.
(1) If the applicant is the assignee or a person to whom the
inventor is under an obligation to assign the invention, documentary
evidence of ownership (e.g., assignment for an assignee, employment
agreement for a person to whom the inventor is under an obligation to
assign the invention) should be recorded as provided for in part 3 of
this chapter no later than the date the issue fee is paid in the
application.
(2) If the applicant is a person who otherwise shows sufficient
proprietary interest in the matter, such applicant must submit a
petition including:
(i) The fee set forth in Sec. 1.17(g);
[[Page 48816]]
(ii) A showing that such person has sufficient proprietary interest
in the matter; and
(iii) A statement that making the application for patent by a
person who otherwise shows sufficient proprietary interest in the
matter on behalf of and as agent for the inventor is appropriate to
preserve the rights of the parties.
(c) Any request to correct or update the name of the applicant
after an applicant has been specified under paragraph (b) of this
section must include an application data sheet under Sec. 1.76
specifying the correct or updated name of the applicant in the
applicant information section (Sec. 1.76(b)(7)). Any request to change
the applicant after an original applicant has been specified under
paragraph (b) of this section must include an application data sheet
under Sec. 1.76 specifying the applicant in the applicant information
section (Sec. 1.76(b)(7)) and comply with Sec. Sec. 3.71 and 3.73 of
this title.
(d) Even if the whole or a part interest in the invention or in the
patent to be issued is assigned or obligated to be assigned, an oath or
declaration must be executed by the actual inventor or each actual
joint inventor, except as provided for in Sec. 1.64. See Sec. 1.64
concerning the execution of a substitute statement by an assignee,
person to whom the inventor is under an obligation to assign the
invention, or a person who otherwise shows sufficient proprietary
interest in the matter.
(e) If a patent is granted on an application filed under this
section by a person other than the inventor, the patent shall be
granted to the real party in interest. Otherwise, the patent may be
issued to the assignee or jointly to the inventor and the assignee as
provided in Sec. 3.81. Where a real party in interest has filed an
application under Sec. 1.46, the applicant shall notify the Office of
any change in the real party in interest no later than payment of the
issue fee. The Office will treat the absence of such a notice as an
indication that there has been no change in the real party in interest.
(f) The Office may publish notice of the filing of the application
by a person who otherwise shows sufficient proprietary interest in the
Official Gazette.
Sec. 1.47 [Removed and Reserved]
0
20. Section 1.47 is removed and reserved.
0
21. Section 1.48 is revised to read as follows:
Sec. 1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or
correction of the name or order of names in a patent application, other
than a reissue application.
(a) Nonprovisional application: Any request to correct or change
the inventorship once the inventorship has been established under Sec.
1.41 must include:
(1) An application data sheet in accordance with Sec. 1.76 that
identifies each inventor by his or her legal name; and
(2) The processing fee set forth in Sec. 1.17(i).
(b) Inventor's oath or declaration for added inventor: An oath or
declaration as required by Sec. 1.63, or a substitute statement in
compliance with Sec. 1.64, will be required for any actual inventor
who has not yet executed such an oath or declaration.
(c) [Reserved]
(d) Provisional application. Once a cover sheet as prescribed by
Sec. 1.51(c)(1) is filed in a provisional application, any request to
correct or change the inventorship must include:
(1) A request, signed by a party set forth in Sec. 1.33(b), to
correct the inventorship that identifies each inventor by his or her
legal name; and
(2) The processing fee set forth in Sec. 1.17(q).
(e) Additional information may be required. The Office may require
such other information as may be deemed appropriate under the
particular circumstances surrounding the correction of inventorship.
(f) Correcting or updating the name of an inventor: Any request to
correct or update the name of the inventor or a joint inventor, or the
order of the names of joint inventors, in a nonprovisional application
must include:
(1) An application data sheet in accordance with Sec. 1.76 that
identifies each inventor by his or her legal name in the desired order;
and
(2) The processing fee set forth in Sec. 1.17(i).
(g) Reissue applications not covered. The provisions of this
section do not apply to reissue applications. See Sec. Sec. 1.171 and
1.175 for correction of inventorship in a patent via a reissue
application.
(h) Correction of inventorship in patent. See Sec. 1.324 for
correction of inventorship in a patent.
(i) Correction of inventorship in an interference or contested case
before the Patent Trial and Appeal Board. In an interference under part
41, subpart D, of this title, a request for correction of inventorship
in an application must be in the form of a motion under Sec.
41.121(a)(2) of this title. In a contested case under part 42, subpart
D, of this title, a request for correction of inventorship in an
application must be in the form of a motion under Sec. 42.22 of this
title. The motion under Sec. 41.121(a)(2) or 42.22 of this title must
comply with the requirements of paragraph (a) of this section.
0
22. Section 1.51 is amended by revising paragraph (b)(2) to read as
follows
Sec. 1.51 General requisites of an application.
* * * * *
(b) * * *
(2) The inventor's oath or declaration, see Sec. Sec. 1.63 and
1.64;
* * * * *
0
23. Section 1.52 is amended by revising the heading of paragraph (b)
and paragraphs (c) and (d) to read as follows:
Sec. 1.52 Language, paper, writing, margins, compact disc
specifications.
* * * * *
(b) The application (specification, including the claims, drawings,
and the inventor's oath or declaration) or supplemental examination or
reexamination proceeding and any amendments or corrections to the
application or reexamination proceeding.
* * * * *
(c) Interlineation, erasure, cancellation, or other alteration of
the application papers may be made before or after the signing of the
inventor's oath or declaration referring to those application papers,
provided that the statements in the inventor's oath or declaration
pursuant to Sec. 1.63 remain applicable to those application papers. A
substitute specification (Sec. 1.125) may be required if the
application papers do not comply with paragraphs (a) and (b) of this
section.
(d) A nonprovisional or provisional application under 35 U.S.C. 111
may be in a language other than English.
(1) Nonprovisional application. If a nonprovisional application
under 35 U.S.C. 111(a) is filed in a language other than English, an
English language translation of the non-English language application, a
statement that the translation is accurate, and the processing fee set
forth in Sec. 1.17(i) are required. If these items are not filed with
the application, the applicant will be notified and given a period of
time within which they must be filed in order to avoid abandonment.
(2) Provisional application. If a provisional application under 35
U.S.C. 111(b) is filed in a language other than English, an English
language translation
[[Page 48817]]
of the non-English language provisional application will not be
required in the provisional application. See Sec. 1.78(a) for the
requirements for claiming the benefit of such provisional application
in a nonprovisional application.
* * * * *
0
24. Section 1.53 is amended by revising the introductory text of
paragraphs (c) and (c)(3), and paragraphs (d)(2)(iv), (f), and (h) to
read as follows:
Sec. 1.53 Application number, filing date, and completion of
application.
* * * * *
(c) Application filing requirements--Provisional application. The
filing date of a provisional application is the date on which a
specification as prescribed by 35 U.S.C. 112(a), and any drawing
required by Sec. 1.81(a) are filed in the Patent and Trademark Office.
No amendment, other than to make the provisional application comply
with the patent statute and all applicable regulations, may be made to
the provisional application after the filing date of the provisional
application.
* * * * *
(3) A provisional application filed under paragraph (c) of this
section may be converted to a nonprovisional application filed under
paragraph (b) of this section and accorded the original filing date of
the provisional application. The conversion of a provisional
application to a nonprovisional application will not result in either
the refund of any fee properly paid in the provisional application or
the application of any such fee to the filing fee, or any other fee,
for the nonprovisional application. Conversion of a provisional
application to a nonprovisional application under this paragraph will
result in the term of any patent to issue from the application being
measured from at least the filing date of the provisional application
for which conversion is requested. Thus, applicants should consider
avoiding this adverse patent term impact by filing a nonprovisional
application claiming the benefit of the provisional application under
35 U.S.C. 119(e) (rather than converting the provisional application
into a nonprovisional application pursuant to this paragraph). A
request to convert a provisional application to a nonprovisional
application must be accompanied by the fee set forth in Sec. 1.17(i)
and an amendment including at least one claim as prescribed by 35
U.S.C. 112(b), unless the provisional application under paragraph (c)
of this section otherwise contains at least one claim as prescribed by
35 U.S.C. 112(b). The nonprovisional application resulting from
conversion of a provisional application must also include the filing
fee, search fee, and examination fee for a nonprovisional application,
the inventor's oath or declaration, and the surcharge required by Sec.
1.16(f) if either the basic filing fee for a nonprovisional application
or the inventor's oath or declaration was not present on the filing
date accorded the resulting nonprovisional application (i.e., the
filing date of the original provisional application). A request to
convert a provisional application to a nonprovisional application must
also be filed prior to the earliest of:
* * * * *
(d) * * *
(2) * * *
(iv) Includes the request for an application under this paragraph,
will utilize the file jacket and contents of the prior application,
including the specification, drawings and the inventor's oath or
declaration from the prior application, to constitute the new
application, and will be assigned the application number of the prior
application for identification purposes; and
* * * * *
(f) Completion of application subsequent to filing--Nonprovisional
(including continued prosecution or reissue) application.
(1) If an application which has been accorded a filing date
pursuant to paragraph (b) or (d) of this section does not include the
basic filing fee, the search fee, or the examination fee, or if an
application which has been accorded a filing date pursuant to paragraph
(b) of this section does not include the inventor's oath or declaration
(Sec. 1.63, Sec. 1.64, Sec. 1.162 or Sec. 1.175), and the applicant
has provided a correspondence address (Sec. 1.33(a)), the applicant
will be notified and given a period of time within which to pay the
basic filing fee, search fee, and examination fee, and pay the
surcharge if required by Sec. 1.16(f) to avoid abandonment.
(2) If an application which has been accorded a filing date
pursuant to paragraph (b) of this section does not include the basic
filing fee, the search fee, the examination fee, or the inventor's oath
or declaration, and the applicant has not provided a correspondence
address (Sec. 1.33(a)), the applicant has two months from the filing
date of the application within which to pay the basic filing fee,
search fee, and examination fee, and pay the surcharge required by
Sec. 1.16(f) to avoid abandonment.
(3) The inventor's oath or declaration in an application under
Sec. 1.53(b) must also be filed within the period specified in
paragraph (f)(1) or (f)(2) of this section, except that the filing of
the inventor's oath or declaration may be postponed until the
application is otherwise in condition for allowance under the
conditions specified in paragraphs (f)(3)(i) and (f)(3)(ii) of this
section.
(i) The application must be an original (non-reissue) application
that contains an application data sheet in accordance with Sec. 1.76
identifying:
(A) Each inventor by his or her legal name;
(B) A mailing address where the inventor customarily receives mail,
and residence, if an inventor lives at a location which is different
from where the inventor customarily receives mail, for each inventor.
(ii) The applicant must file an oath or declaration in compliance
with Sec. 1.63, or a substitute statement in compliance with Sec.
1.64, executed by or with respect to each actual inventor no later than
the expiration of the time period set in the ``Notice of Allowability''
to avoid abandonment, when the applicant is notified in a ``Notice of
Allowability'' that an application is otherwise in condition for
allowance. The time period set in a ``Notice of Allowability'' is not
extendable. See Sec. 1.136(c). The Office may dispense with the notice
provided for in paragraph (f)(1) of this section if an oath or
declaration under Sec. 1.63, or a substitute statement under Sec.
1.64, executed by or with respect to each actual inventor has been
filed before the application is in condition for allowance.
(4) If the excess claims fees required by Sec. 1.16(h) and (i) and
multiple dependent claim fee required by Sec. 1.16(j) are not paid on
filing or on later presentation of the claims for which the excess
claims or multiple dependent claim fees are due, the fees required by
Sec. 1.16(h), (i) and (j) must be paid or the claims canceled by
amendment prior to the expiration of the time period set for reply by
the Office in any notice of fee deficiency. If the application size fee
required by Sec. 1.16(s) (if any) is not paid on filing or on later
presentation of the amendment necessitating a fee or additional fee
under Sec. 1.16(s), the fee required by Sec. 1.16(s) must be paid
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency in order to avoid abandonment.
(5) This paragraph applies to continuation or divisional
applications under paragraphs (b) or (d) of this section and to
continuation-in-part
[[Page 48818]]
applications under paragraph (b) of this section. See Sec. 1.63(d)
concerning the submission of a copy of the inventor's oath or
declaration from the prior application for a continuing application
under paragraph (b) of this section.
(6) If applicant does not pay the basic filing fee during the
pendency of the application, the Office may dispose of the application.
* * * * *
(h) Subsequent treatment of application--Nonprovisional (including
continued prosecution) application. An application for a patent filed
under paragraphs (b) or (d) of this section will not be placed on the
files for examination until all its required parts, complying with the
rules relating thereto, are received, except that the inventor's oath
or declaration may be filed when the application is otherwise in
condition for allowance pursuant to paragraph (f)(3) of this section
and minor informalities may be waived subject to subsequent correction
whenever required.
* * * * *
0
25. Section 1.55 is amended by revising the introductory text of
paragraph (a)(1)(i), the introductory text of paragraph (c), and
paragraph (d)(1)(ii) to read as follows:
Sec. 1.55 Claim for foreign priority.
(a) * * *
(1)(i) In an original application filed under 35 U.S.C. 111(a), the
claim for foreign priority must be presented in an application data
sheet (Sec. 1.76(b)(6)) during the pendency of the application, and
within the later of four months from the actual filing date of the
application or sixteen months from the filing date of the prior foreign
application. This time period is not extendable. The claim must
identify the foreign application for which priority is claimed, as well
as any foreign application for the same subject matter and having a
filing date before that of the application for which priority is
claimed, by specifying the application number, country (or intellectual
property authority), day, month, and year of its filing. The time
periods in this paragraph do not apply in an application under 35
U.S.C. 111(a) if the application is:
* * * * *
(c) Unless such claim is accepted in accordance with the provisions
of this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d) or
365(a) not presented in an application data sheet (Sec. 1.76(b)(6))
within the time period provided by paragraph (a) of this section is
considered to have been waived. If a claim for priority under 35 U.S.C.
119(a)-(d) or 365(a) is presented after the time period provided by
paragraph (a) of this section, the claim may be accepted if the claim
identifying the prior foreign application by specifying its application
number, country (or intellectual property authority), and the day,
month, and year of its filing was unintentionally delayed. A petition
to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or
365(a) must be accompanied by:
* * * * *
(d)(1) * * *
(ii) The foreign application is identified in an application data
sheet (Sec. 1.76(b)(6)); and
* * * * *
0
26. Section 1.56 is amended by revising paragraph (c)(3) to read as
follows:
Sec. 1.56 Duty to disclose information material to patentability.
* * * * *
(c) * * *
(3) Every other person who is substantively involved in the
preparation or prosecution of the application and who is associated
with the inventor, the applicant, an assignee, or anyone to whom there
is an obligation to assign the application.
* * * * *
0
27. Section 1.59 is amended by revising paragraph (a)(2) to read as
follows:
Sec. 1.59 Expungement of information or copy of papers in application
file.
(a) * * *
(2) Information forming part of the original disclosure (i.e.,
written specification including the claims, drawings, and any
preliminary amendment present on the filing date of the application)
will not be expunged from the application file.
* * * * *
0
28. Section 1.63 is revised to read as follows:
Sec. 1.63 Inventor's oath or declaration.
(a) The inventor, or each individual who is a joint inventor of a
claimed invention, in an application for patent must execute an oath or
declaration directed to the application, except as provided for in
Sec. 1.64. An oath or declaration under this section must:
(1) Identify the inventor or joint inventor executing the oath or
declaration by his or her legal name;
(2) Identify the application to which it is directed;
(3) Include a statement that the person executing the oath or
declaration believes the named inventor or joint inventor to be the
original inventor or an original joint inventor of a claimed invention
in the application for which the oath or declaration is being
submitted; and
(4) State that the application was made or was authorized to be
made by the person executing the oath or declaration.
(b) Unless the following information is supplied in an application
data sheet in accordance with Sec. 1.76, the oath or declaration must
also identify:
(1) Each inventor by his or her legal name; and
(2) A mailing address where the inventor customarily receives mail,
and residence, if an inventor lives at a location which is different
from where the inventor customarily receives mail, for each inventor.
(c) A person may not execute an oath or declaration for an
application unless that person has reviewed and understands the
contents of the application, including the claims, and is aware of the
duty to disclose to the Office all information known to the person to
be material to patentability as defined in Sec. 1.56. There is no
minimum age for a person to be qualified to execute an oath or
declaration, but the person must be competent to execute, i.e.,
understand, the document that the person is executing.
(d)(1) A newly executed oath or declaration under Sec. 1.63, or
substitute statement under Sec. 1.64, is not required under Sec.
1.51(b)(2) and Sec. 1.53(f) or Sec. 1.497 for an inventor in a
continuing application that claims the benefit under 35 U.S.C. 120,
121, or 365(c) in compliance with Sec. 1.78 of an earlier-filed
application, provided that an oath or declaration in compliance with
this section, or substitute statement under Sec. 1.64, was executed by
or with respect to such inventor and was filed in the earlier-filed
application, and a copy of such oath, declaration, or substitute
statement showing the signature or an indication thereon that it was
executed, is submitted in the continuing application.
(2) The inventorship of a continuing application filed under 35
U.S.C. 111(a) is the inventor or joint inventors specified in the
application data sheet filed before or concurrently with the copy of
the inventor's oath or declaration from the earlier-filed application.
If an application data sheet is not filed before or concurrently with
the copy of the inventor's oath or declaration from the earlier-filed
application, the inventorship is the inventorship set forth in the copy
of the inventor's oath or declaration from the earlier-filed
application, unless it is
[[Page 48819]]
accompanied by a statement signed pursuant to Sec. 1.33(b) stating the
name of each inventor in the continuing application.
(3) Any new joint inventor named in the continuing application must
provide an oath or declaration in compliance with this section, except
as provided for in Sec. 1.64.
(e)(1) An assignment may also serve as an oath or declaration
required by this section if the assignment as executed:
(i) Includes the information and statements required under
paragraphs (a) and (b) of this section; and
(ii) A copy of the assignment is recorded as provided for in part 3
of this chapter.
(2) Any reference to an oath or declaration under this section
includes an assignment as provided for in this paragraph.
(f) With respect to an application naming only one inventor, any
reference to the inventor's oath or declaration in this chapter
includes a substitute statement executed under Sec. 1.64. With respect
to an application naming more than one inventor, any reference to the
inventor's oath or declaration in this chapter means the oaths,
declarations, or substitute statements that have been collectively
executed by or with respect to all of the joint inventors, unless
otherwise clear from the context.
(g) An oath or declaration under this section, including the
statement provided for in paragraph (e) of this section, must be
executed (i.e., signed) in accordance either with Sec. 1.66 or with an
acknowledgment that any willful false statement made in such
declaration or statement is punishable under 18 U.S.C. 1001 by fine or
imprisonment of not more than five (5) years, or both.
(h) An oath or declaration filed at any time pursuant to 35 U.S.C.
115(h)(1) will be placed in the file record of the application or
patent, but may not necessarily be reviewed by the Office. Any request
for correction of the named inventorship must comply with Sec. 1.48 in
an application and Sec. 1.324 in a patent.
0
29. Section 1.64 is revised to read as follows:
Sec. 1.64 Substitute statement in lieu of an oath or declaration.
(a) An applicant under Sec. 1.43, 1.45 or 1.46 may execute a
substitute statement in lieu of an oath or declaration under Sec. 1.63
if the inventor is deceased, is under a legal incapacity, has refused
to execute the oath or declaration under Sec. 1.63, or cannot be found
or reached after diligent effort.
(b) A substitute statement under this section must:
(1) Comply with the requirements of Sec. 1.63(a), identifying the
inventor or joint inventor with respect to whom a substitute statement
in lieu of an oath or declaration is executed, and stating upon
information and belief the facts which such inventor is required to
state;
(2) Identify the person executing the substitute statement and the
relationship of such person to the inventor or joint inventor with
respect to whom the substitute statement is executed, and unless such
information is supplied in an application data sheet in accordance with
Sec. 1.76, the residence and mailing address of the person signing the
substitute statement;
(3) Identify the circumstances permitting the person to execute the
substitute statement in lieu of an oath or declaration under Sec.
1.63, namely whether the inventor is deceased, is under a legal
incapacity, cannot be found or reached after a diligent effort was
made, or has refused to execute the oath or declaration under Sec.
1.63; and
(4) Unless the following information is supplied in an application
data sheet in accordance with Sec. 1.76, also identify:
(i) Each inventor by his or her legal name; and
(ii) The last known mailing address where the inventor customarily
receives mail, and last known residence, if an inventor lives at a
location which is different from where the inventor customarily
receives mail, for each inventor who is not deceased or under a legal
incapacity.
(c) A person may not execute a substitute statement provided for in
this section for an application unless that person has reviewed and
understands the contents of the application, including the claims, and
is aware of the duty to disclose to the Office all information known to
the person to be material to patentability as defined in Sec. 1.56.
(d) Any reference to an inventor's oath or declaration includes a
substitute statement provided for in this section.
(e) A substitute statement under this section must contain an
acknowledgment that any willful false statement made in such statement
is punishable under section 1001 of title 18 by fine or imprisonment of
not more than 5 years, or both.
(f) A nonsigning inventor or legal representative may subsequently
join in the application by submitting an oath or declaration under
Sec. 1.63. The submission of an oath or declaration by a nonsigning
inventor or legal representative in an application filed under Sec.
1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal
representative to revoke or grant a power of attorney.
0
30. Section 1.66 is revised to read as follows:
Sec. 1.66 Statements under oath.
An oath or affirmation may be made before any person within the
United States authorized by law to administer oaths. An oath made in a
foreign country may be made before any diplomatic or consular officer
of the United States authorized to administer oaths, or before any
officer having an official seal and authorized to administer oaths in
the foreign country in which the applicant may be, whose authority
shall be proved by a certificate of a diplomatic or consular officer of
the United States, or by an apostille of an official designated by a
foreign country which, by treaty or convention, accords like effect to
apostilles of designated officials in the United States. The oath shall
be attested in all cases in this and other countries, by the proper
official seal of the officer before whom the oath or affirmation is
made. Such oath or affirmation shall be valid as to execution if it
complies with the laws of the State or country where made. When the
person before whom the oath or affirmation is made in this country is
not provided with a seal, his official character shall be established
by competent evidence, as by a certificate from a clerk of a court of
record or other proper officer having a seal.
0
31. Section 1.67 is revised to read as follows:
Sec. 1.67 Supplemental oath or declaration.
(a) The applicant may submit an inventor's oath or declaration
meeting the requirements of Sec. 1.63, Sec. 1.64, or Sec. 1.162 to
correct any deficiencies or inaccuracies present in an earlier-filed
inventor's oath or declaration. Deficiencies or inaccuracies due to the
failure to meet the requirements of Sec. 1.63(b) in an oath or
declaration may be corrected with an application data sheet in
accordance with Sec. 1.76, except that any correction of inventorship
must be pursuant to Sec. 1.48.
(b) A supplemental inventor's oath or declaration under this
section must be executed by the person whose inventor's oath or
declaration is being withdrawn, replaced, or otherwise corrected.
(c) The Office will not require a person who has executed an oath
or declaration in compliance with 35 U.S.C. 115 and Sec. 1.63 or 1.162
for an application to provide an additional inventor's oath or
declaration for the application.
[[Page 48820]]
(d) No new matter may be introduced into a nonprovisional
application after its filing date even if an inventor's oath or
declaration is filed to correct deficiencies or inaccuracies present in
the earlier-filed inventor's oath or declaration.
0
32. Section 1.76 is amended by revising paragraphs (a), (b)(1), (b)(3),
(b)(5), (b)(7), (c), and (d), and adding new paragraph (e) to read as
follows:
Sec. 1.76 Application data sheet.
(a) Application data sheet: An application data sheet is a sheet or
sheets, that may be submitted in a provisional application under 35
U.S.C. 111(b), a nonprovisional application under 35 U.S.C. 111(a), or
a national stage application under 35 U.S.C. 371, and must be submitted
when required by Sec. 1.55 or 1.78 to claim priority to or the benefit
of a prior-filed application under 35 U.S.C. 119, 120, 121, or 365. An
application data sheet must be titled ``Application Data Sheet.'' An
application data sheet must contain all of the section headings listed
in paragraph (b) of this section, except as provided in paragraph
(c)(2) of this section, with any appropriate data for each section
heading. If an application data sheet is provided, the application data
sheet is part of the application for which it has been submitted.
(b) * * *
(1) Inventor information. This information includes the legal name,
residence, and mailing address of the inventor or each joint inventor.
* * * * *
(3) Application information. This information includes the title of
the invention, the total number of drawing sheets, a suggested drawing
figure for publication (in a nonprovisional application), any docket
number assigned to the application, the type of application (e.g.,
utility, plant, design, reissue, provisional), whether the application
discloses any significant part of the subject matter of an application
under a secrecy order pursuant to Sec. 5.2 of this chapter (see Sec.
5.2(c)), and, for plant applications, the Latin name of the genus and
species of the plant claimed, as well as the variety denomination.
* * * * *
(5) Domestic benefit information. This information includes the
application number, the filing date, the status (including patent
number if available), and relationship of each application for which a
benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c).
Providing this information in the application data sheet constitutes
the specific reference required by 35 U.S.C. 119(e) or 120, and Sec.
1.78(a)(2) or Sec. 1.78(a)(5).
* * * * *
(7) Applicant information: This information includes the name
(either natural person or juristic entity) and address of the legal
representative, assignee, person to whom the inventor is under an
obligation to assign the invention, or person who otherwise shows
sufficient proprietary interest in the matter who is the applicant
under Sec. 1.43 or Sec. 1.46. Providing assignment information in the
application data sheet does not substitute for compliance with any
requirement of part 3 of this chapter to have an assignment recorded by
the Office.
(c) Correcting and updating an application data sheet. (1)
Information in a previously submitted application data sheet,
inventor's oath or declaration under Sec. 1.63, Sec. 1.64 or Sec.
1.67, or otherwise of record, may be corrected or updated until payment
of the issue fee by a new application data sheet providing corrected or
updated information, except that inventorship changes must comply with
the requirements of Sec. 1.48, foreign priority and domestic benefit
information changes must comply with Sec. Sec. 1.55 and 1.78, and
correspondence address changes are governed by Sec. 1.33(a).
(2) An application data sheet providing corrected or updated
information may include all of the sections listed in paragraph (b) of
this section or only those sections containing changed or updated
information. The application data sheet must include the section
headings listed in paragraph (b) of this section for each section
included in the application data sheet, and must identify the
information that is being changed, with underlining for insertions, and
strike-through or brackets for text removed, except that identification
of information being changed is not required for an application data
sheet included with an initial submission under 35 U.S.C. 371.
(d) Inconsistencies between application data sheet and other
documents. For inconsistencies between information that is supplied by
both an application data sheet under this section and other documents:
(1) The most recent submission will govern with respect to
inconsistencies as between the information provided in an application
data sheet, a designation of a correspondence address, or by the
inventor's oath or declaration, except that:
(i) The most recent application data sheet will govern with respect
to foreign priority (Sec. 1.55) or domestic benefit (Sec. 1.78)
claims; and
(ii) The naming of the inventorship is governed by Sec. 1.41 and
changes to inventorship or the names of the inventors is governed by
Sec. 1.48.
(2) The information in the application data sheet will govern when
the inconsistent information is supplied at the same time by a
designation of correspondence address or the inventor's oath or
declaration.
(3) The Office will capture bibliographic information from the
application data sheet. The Office will generally not review the
inventor's oath or declaration to determine if the bibliographic
information contained therein is consistent with the bibliographic
information provided in an application data sheet. Incorrect
bibliographic information contained in an application data sheet may be
corrected as provided in paragraph (c)(1) of this section.
(e) Signature requirement. An application data sheet must be signed
in compliance with Sec. 1.33(b). An unsigned application data sheet
will be treated only as a transmittal letter.
0
33. Section 1.77 is amended by revising paragraph (a)(6) to read as
follows:
Sec. 1.77 Arrangement of application elements.
(a) * * *
(6) The inventor's oath or declaration.
* * * * *
0
34. Section 1.78 is amended by revising paragraphs (a)(2)(iii),
(a)(5)(iii), (a)(5)(iv), and (c) to read as follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross-
references to other applications.
(a) * * *
(2) * * *
(iii) If the later-filed application is a nonprovisional
application, the reference required by this paragraph must be included
in an application data sheet (Sec. 1.76(b)(5)).
* * * * *
(5) * * *
(iii) If the later filed application is a nonprovisional
application, the reference required by this paragraph must be included
in an application data sheet (Sec. 1.76(b)(5)).
(iv) If the prior-filed provisional application was filed in a
language other than English and both an English-language translation of
the prior-filed provisional application and a statement that the
translation is accurate were not previously filed in the prior-filed
provisional application, applicant will be notified and given a period
of time
[[Page 48821]]
within which to file, in the prior-filed provisional application, the
translation and the statement. If the notice is mailed in a pending
nonprovisional application, a timely reply to such a notice must
include the filing in the nonprovisional application of either a
confirmation that the translation and statement were filed in the
provisional application, or an application data sheet eliminating the
reference under this paragraph to the prior-filed provisional
application, or the nonprovisional application will be abandoned. The
translation and statement may be filed in the provisional application,
even if the provisional application has become abandoned.
* * * * *
(c) If an application or a patent under reexamination and at least
one other application naming different inventors are owned by the same
person and contain conflicting claims, and there is no statement of
record indicating that the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person at the time
the later invention was made, the Office may require the applicant to
state whether the claimed inventions were commonly owned or subject to
an obligation of assignment to the same person at the time the later
invention was made, and if not, indicate which named inventor is the
prior inventor. Even if the claimed inventions were commonly owned, or
subject to an obligation of assignment to the same person, at the time
the later invention was made, the conflicting claims may be rejected
under the doctrine of double patenting in view of such commonly owned
or assigned applications or patents under reexamination.
0
35. Section 1.81 is amended by revising paragraph (a) to read as
follows:
Sec. 1.81 Drawings required in patent application.
(a) The applicant for a patent is required to furnish a drawing of
the invention where necessary for the understanding of the subject
matter sought to be patented; this drawing, or a high quality copy
thereof, must be filed with the application. Since corrections are the
responsibility of the applicant, the original drawing(s) should be
retained by the applicant for any necessary future correction.
* * * * *
0
36. Section 1.105 is amended by removing paragraph (a)(2), and
redesignating paragraphs (a)(3) and (a)(4) as paragraphs (a)(2) and
(a)(3), respectively.
0
37. Section 1.131 is amended by revising the introductory text of
paragraph (a) to read as follows:
Sec. 1.131 Affidavit or declaration of prior invention.
(a) When any claim of an application or a patent under
reexamination is rejected, the applicant or patent owner may submit an
appropriate oath or declaration to establish invention of the subject
matter of the rejected claim prior to the effective date of the
reference or activity on which the rejection is based. The effective
date of a U.S. patent, U.S. patent application publication, or
international application publication under PCT Article 21(2) is the
earlier of its publication date or date that it is effective as a
reference under 35 U.S.C. 102(e). Prior invention may not be
established under this section in any country other than the United
States, a NAFTA country, or a WTO member country. Prior invention may
not be established under this section before December 8, 1993, in a
NAFTA country other than the United States, or before January 1, 1996,
in a WTO member country other than a NAFTA country. Prior invention may
not be established under this section if either:
* * * * *
0
38. Section 1.136 is amended by revising paragraph (c)(1) to read as
follows:
Sec. 1.136 Extensions of time.
* * * * *
(c) * * *
(1) The period for submitting the inventor's oath or declaration;
* * * * *
0
39. Section 1.153 is amended by revising paragraph (b) to read as
follows:
Sec. 1.153 Title, description and claim, oath or declaration.
* * * * *
(b) The inventor's oath or declaration must comply with the
requirements of Sec. 1.63, or comply with the requirements of Sec.
1.64 for a substitute statement.
0
40. Section 1.154 is amended by revising paragraph (a)(6) to read as
follows:
Sec. 1.154 Arrangement of application elements in a design
application.
(a) * * *
(6) The inventor's oath or declaration (see Sec. 1.153(b)).
* * * * *
0
41. Section 1.162 is revised to read as follows:
Sec. 1.162 Applicant, oath or declaration.
The inventor named for a plant patent application must be the
person who has invented or discovered and asexually reproduced the new
and distinct variety of plant for which a patent is sought. The
inventor's oath or declaration, in addition to the averments required
by Sec. 1.63 or Sec. 1.64, must state that the inventor has asexually
reproduced the plant. Where the plant is a newly found plant, the
inventor's oath or declaration must also state that it was found in a
cultivated area.
0
42. Section 1.163 is amended by revising paragraph (b)(6) to read as
follows:
Sec. 1.163 Specification and arrangement of application elements in a
plant application.
* * * * *
(b) * * *
(6) The inventor's oath or declaration (Sec. 1.162).
* * * * *
0
43. Section 1.172 is revised to read as follows:
Sec. 1.172 Reissue applicant.
(a) The reissue applicant is the original patentee, or the current
patent owner if there has been an assignment. A reissue application
must be accompanied by the written consent of all assignees, if any,
currently owning an undivided interest in the patent. All assignees
consenting to the reissue must establish their ownership in the patent
by filing in the reissue application a submission in accordance with
the provisions of Sec. 3.73(c) of this chapter.
(b) A reissue will be granted to the original patentee, his legal
representatives or assigns as the interest may appear.
0
44. Section 1.175 is revised to read as follows:
Sec. 1.175 Inventor's oath or declaration for a reissue application.
(a) The inventor's oath or declaration for a reissue application,
in addition to complying with the requirements of Sec. 1.63, Sec.
1.64, or Sec. 1.67, must also specifically identify at least one error
pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue
and state that the applicant believes the original patent to be wholly
or partly inoperative or invalid by reason of a defective specification
or drawing, or by reason of the patentee claiming more or less than the
patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the
claims of the patent (a basis for the reissue is the patentee claiming
less than the patentee had the right to claim in the patent), the
inventor's oath or declaration for a reissue application must identify
a claim that the application seeks to
[[Page 48822]]
broaden. A claim is a broadened claim if the claim is broadened in any
respect.
(c) The inventor, or each individual who is a joint inventor of a
claimed invention, in a reissue application must execute an oath or
declaration for the reissue application, except as provided for in
Sec. 1.64, and except that the inventor's oath or declaration for a
reissue application may be signed by the assignee of the entire
interest if:
(1) The application does not seek to enlarge the scope of the
claims of the original patent; or
(2) The application for the original patent was filed under Sec.
1.46 by the assignee of the entire interest.
(d) If errors previously identified in the inventor's oath or
declaration for a reissue application pursuant to paragraph (a) of this
section are no longer being relied upon as the basis for reissue, the
applicant must identify an error being relied upon as the basis for
reissue.
(e) The inventor's oath or declaration for a reissue application
required by paragraph (a) of this section may be submitted under the
provisions of Sec. 1.53(f), except that the provisions of Sec.
1.53(f)(3) do not apply to a reissue application.
(f)(1) The requirement for the inventor's oath or declaration for a
continuing reissue application that claims the benefit under 35 U.S.C.
120, 121, or 365(c) in compliance with Sec. 1.78 of an earlier-filed
reissue application may be satisfied by a copy of the inventor's oath
or declaration from the earlier-filed reissue application, provided
that:
(i) The inventor, or each individual who is a joint inventor of a
claimed invention, in the reissue application executed an inventor's
oath or declaration for the earlier-filed reissue application, except
as provided for in Sec. 1.64;
(ii) The continuing reissue application does not seek to enlarge
the scope of the claims of the original patent; or
(iii) The application for the original patent was filed under Sec.
1.46 by the assignee of the entire interest.
(2) If all errors identified in the inventor's oath or declaration
from the earlier-filed reissue application are no longer being relied
upon as the basis for reissue, the applicant must identify an error
being relied upon as the basis for reissue.
(g) An oath or declaration filed at any time pursuant to 35 U.S.C.
115(h)(1), will be placed in the file record of the reissue
application, but may not necessarily be reviewed by the Office.
0
45. Section 1.211 is amended by revising paragraph (c) to read as
follows:
Sec. 1.211 Publication of applications.
* * * * *
(c) An application filed under 35 U.S.C. 111(a) will not be
published until it includes the basic filing fee (Sec. 1.16(a) or
Sec. 1.16(c)) and any English translation required by Sec. 1.52(d).
The Office may delay publishing any application until it includes any
application size fee required by the Office under Sec. 1.16(s) or
Sec. 1.492(j), a specification having papers in compliance with Sec.
1.52 and an abstract (Sec. 1.72(b)), drawings in compliance with Sec.
1.84, a sequence listing in compliance with Sec. Sec. 1.821 through
1.825 (if applicable), and the inventor's oath or declaration or
application data sheet containing the information specified in Sec.
1.63(b).
* * * * *
0
46. Section 1.215 is amended by revising paragraphs (a) through (c) to
read as follows:
Sec. 1.215 Patent application publication.
(a) The publication of an application under 35 U.S.C. 122(b) shall
include a patent application publication. The date of publication shall
be indicated on the patent application publication. The patent
application publication will be based upon the specification and
drawings deposited on the filing date of the application, as well as
the application data sheet and/or the inventor's oath or declaration.
The patent application publication may also be based upon amendments to
the specification (other than the abstract or the claims) that are
reflected in a substitute specification under Sec. 1.125(b),
amendments to the abstract under Sec. 1.121(b), amendments to the
claims that are reflected in a complete claim listing under Sec.
1.121(c), and amendments to the drawings under Sec. 1.121(d), provided
that such substitute specification or amendment is submitted in
sufficient time to be entered into the Office file wrapper of the
application before technical preparations for publication of the
application have begun. Technical preparations for publication of an
application generally begin four months prior to the projected date of
publication. The patent application publication of an application that
has entered the national stage under 35 U.S.C. 371 may also include
amendments made during the international stage. See paragraph (c) of
this section for publication of an application based upon a copy of the
application submitted via the Office electronic filing system.
(b) The patent application publication will include the name of the
assignee, person to whom the inventor is under an obligation to assign
the invention, or person who otherwise shows sufficient proprietary
interest in the matter if that information is provided in the
application data sheet in an application filed under Sec. 1.46.
Assignee information may be included on the patent application
publication in other applications if the assignee information is
provided in an application data sheet submitted in sufficient time to
be entered into the Office file wrapper of the application before
technical preparations for publication of the application have begun.
Providing assignee information in the application data sheet does not
substitute for compliance with any requirement of part 3 of this
chapter to have an assignment recorded by the Office.
(c) At applicant's option, the patent application publication will
be based upon the copy of the application (specification, drawings, and
the application data sheet and/or the inventor's oath or declaration)
as amended, provided that applicant supplies such a copy in compliance
with the Office electronic filing system requirements within one month
of the mailing date of the first Office communication that includes a
confirmation number for the application, or fourteen months of the
earliest filing date for which a benefit is sought under title 35,
United States Code, whichever is later.
* * * * *
0
47. Section 1.321 is amended by revising paragraph (b) to read as
follows:
Sec. 1.321 Statutory disclaimers, including terminal disclaimers.
* * * * *
(b) An applicant may disclaim or dedicate to the public the entire
term, or any terminal part of the term, of a patent to be granted. Such
terminal disclaimer is binding upon the grantee and its successors or
assigns. The terminal disclaimer, to be recorded in the Patent and
Trademark Office, must:
(1) Be signed by the applicant or an attorney or agent of record;
(2) Specify the portion of the term of the patent being disclaimed;
(3) State the present extent of applicant's ownership interest in
the patent to be granted; and
(4) Be accompanied by the fee set forth in Sec. 1.20(d).
* * * * *
0
48. Section 1.324 is revised to read as follows:
[[Page 48823]]
Sec. 1.324 Correction of inventorship in patent, pursuant to 35
U.S.C. 256.
(a) Whenever through error a person is named in an issued patent as
the inventor, or an inventor is not named in an issued patent, the
Director, pursuant to 35 U.S.C. 256, may, on application of all the
parties and assignees, or on order of a court before which such matter
is called in question, issue a certificate naming only the actual
inventor or inventors.
(b) Any request to correct inventorship of a patent pursuant to
paragraph (a) of this section must be accompanied by:
(1) A statement from each person who is being added as an inventor
and each person who is currently named as an inventor either agreeing
to the change of inventorship or stating that he or she has no
disagreement in regard to the requested change;
(2) A statement from all assignees of the parties submitting a
statement under paragraph (b)(1) of this section agreeing to the change
of inventorship in the patent, which statement must comply with the
requirements of Sec. 3.73(c) of this chapter; and
(3) The fee set forth in Sec. 1.20(b).
(c) For correction of inventorship in an application, see Sec.
1.48.
(d) In an interference under part 41, subpart D, of this title, a
request for correction of inventorship in a patent must be in the form
of a motion under Sec. 41.121(a)(2) of this title. In a contested case
under part 42, subpart D, of this title, a request for correction of
inventorship in a patent must be in the form of a motion under Sec.
42.22 of this title. The motion under Sec. 41.121(a)(2) or Sec. 42.22
of this title must comply with the requirements of this section.
0
49. Section 1.414 is amended by revising paragraph (c)(2) to read as
follows:
Sec. 1.414 The United States Patent and Trademark Office as a
Designated Office or Elected Office.
* * * * *
(c) * * *
(2) National stage processing for international applications
entering the national stage under 35 U.S.C. 371.
0
50. Section 1.421 is revised to read as follows:
Sec. 1.421 Applicant for international application.
(a) Only residents or nationals of the United States of America may
file international applications in the United States Receiving Office.
If an international application does not include an applicant who is
indicated as being a resident or national of the United States of
America, and at least one applicant:
(1) Has indicated a residence or nationality in a PCT Contracting
State, or
(2) Has no residence or nationality indicated, applicant will be so
notified and, if the international application includes a fee amount
equivalent to that required by Sec. 1.445(a)(4), the international
application will be forwarded for processing to the International
Bureau acting as a Receiving Office (see also Sec. 1.412(c)(6)).
(b) Although the United States Receiving Office will accept
international applications filed by any applicant who is a resident or
national of the United States of America for international processing,
for the purposes of the designation of the United States, an
international application will be accepted by the Patent and Trademark
Office for the national stage only if the applicant is the inventor or
other person as provided in Sec. 1.422 or Sec. 1.424. Joint inventors
must jointly apply for an international application.
(c) A registered attorney or agent of the applicant may sign the
international application Request and file the international
application for the applicant. A separate power of attorney from each
applicant may be required.
(d) Any indication of different applicants for the purpose of
different Designated Offices must be shown on the Request portion of
the international application.
(e) Requests for changes in the indications concerning the
applicant, agent, or common representative of an international
application shall be made in accordance with PCT Rule 92bis and may be
required to be signed by all applicants.
(f) Requests for withdrawals of the international application,
designations, priority claims, the Demand, or elections shall be made
in accordance with PCT Rule 90bis and must be signed by all applicants.
A separate power of attorney from the applicants will be required for
the purposes of any request for a withdrawal in accordance with PCT
Rule 90bis which is not signed by all applicants.
0
51. Section 1.422 is revised to read as follows:
Sec. 1.422 Legal representative as applicant in an international
application.
If an inventor is deceased or under legal incapacity, the legal
representative of the inventor may be an applicant in an international
application which designates the United States of America.
Sec. 1.423 [Removed and Reserved]
0
52. Section 1.423 is removed and reserved.
0
53. Section 1.424 is added to read as follows:
Sec. 1.424 Assignee, obligated assignee, or person having sufficient
proprietary interest as applicant in an international application.
(a) A person to whom the inventor has assigned or is under an
obligation to assign the invention may be an applicant in an
international application which designates the United States of
America. A person who otherwise shows sufficient proprietary interest
in the matter may be an applicant in an international application which
designates the United States of America on proof of the pertinent facts
and a showing that such action is appropriate to preserve the rights of
the parties.
(b) Neither any showing required under paragraph (a) of this
section nor documentary evidence of ownership or proprietary interest
will be required or considered by the Office in the international
stage, but will be required in the national stage in accordance with
the conditions and requirements of Sec. 1.46.
0
54. Section 1.431 is amended by revising paragraph (b)(3)(iii) to read
as follows:
Sec. 1.431 International application requirements.
* * * * *
(b) * * *
(3) * * *
(iii) The name of the applicant, as prescribed (note Sec. Sec.
1.421, 1.422, and 1.424);
* * * * *
0
55. Section 1.491 is amended by revising the section heading and
paragraph (b), and adding a new paragraph (c), to read as follows:
Sec. 1.491 National stage commencement, entry, and fulfillment.
* * * * *
(b) An international application enters the national stage when the
applicant has filed the documents and fees required by 35 U.S.C.
371(c)(1) and (c)(2) within the period set in Sec. 1.495.
(c) An international application fulfills the requirements of 35
U.S.C. 371 when the national stage has commenced under 35 U.S.C. 371(b)
or (f) and all applicable requirements of 35 U.S.C. 371 have been
satisfied.
0
56. Section 1.492 is amended by revising paragraph (h) to read as
follows:
Sec. 1.492 National stage fees.
* * * * *
[[Page 48824]]
(h) Surcharge for filing any of the search fee, the examination
fee, or the inventor's oath or declaration after the date of the
commencement of the national stage (Sec. 1.491(a)) pursuant to Sec.
1.495(c)
By a small entity (Sec. 1.27(a))............................ $65.00
By other than a small entity.................................. $130.00
* * * * *
0
57. Section 1.495 is amended by revising paragraphs (a), (c), (g), and
(h) to read as follows:
Sec. 1.495 Entering the national stage in the United States of
America.
(a) The applicant in an international application must fulfill the
requirements of 35 U.S.C. 371 within the time periods set forth in
paragraphs (b) and (c) of this section in order to prevent the
abandonment of the international application as to the United States of
America. The thirty-month time period set forth in paragraphs (b), (c),
(d), (e) and (h) of this section may not be extended.
* * * * *
(c)(1) If applicant complies with paragraph (b) of this section
before expiration of thirty months from the priority date, the Office
will notify the applicant if he or she has omitted any of:
(i) A translation of the international application, as filed, into
the English language, if it was originally filed in another language
and if any English language translation of the publication of the
international application previously submitted under 35 U.S.C. 154(d)
(Sec. 1.417) is not also a translation of the international
application as filed (35 U.S.C. 371(c)(2));
(ii) The inventor's oath or declaration (35 U.S.C. 371(c)(4) and
Sec. 1.497), if a declaration of inventorship in compliance with Sec.
1.63 has not been previously submitted in the international application
under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule
26ter.1;
(iii) The search fee set forth in Sec. 1.492(b);
(iv) The examination fee set forth in Sec. 1.492(c); and
(v) Any application size fee required by Sec. 1.492(j).
(2) A notice under paragraph (c)(1) of this section will set a time
period within which applicant must provide any omitted translation,
search fee set forth in Sec. 1.492(b), examination fee set forth in
Sec. 1.492(c), and any application size fee required by Sec. 1.492(j)
in order to avoid abandonment of the application.
(3) The inventor's oath or declaration must also be filed within
the period specified in paragraph (c)(2) of this section, except that
the filing of the inventor's oath or declaration may be postponed until
the application is otherwise in condition for allowance under the
conditions specified in paragraphs (c)(3)(i) through (c)(3)(iii) of
this section.
(i) The application contains an application data sheet in
accordance with Sec. 1.76 filed prior to the expiration of the time
period set in any notice under paragraph (c)(1) identifying:
(A) Each inventor by his or her legal name;
(B) A mailing address where the inventor customarily receives mail,
and residence, if an inventor lives at a location which is different
from where the inventor customarily receives mail, for each inventor.
(ii) The applicant must file an oath or declaration in compliance
with Sec. 1.63, or substitute statement in compliance with Sec. 1.64,
executed by or with respect to each actual inventor no later than the
expiration of the time period set in the ``Notice of Allowability'' to
avoid abandonment, when the applicant is notified in a ``Notice of
Allowability'' that an application is otherwise in condition for
allowance. The time period set in a ``Notice of Allowability'' is not
extendable. See Sec. 1.136(c). The Office may dispense with the notice
provided for in paragraph (c)(1) of this section if an oath or
declaration under Sec. 1.63, or substitute statement under Sec. 1.64,
executed by or with respect to each actual inventor has been filed
before the application is in condition for allowance.
(iii) An international application in which the basic national fee
under 35 U.S.C. 41(a)(1)(F) has been paid and for which an application
data sheet in accordance with Sec. 1.76 has been filed may be treated
as complying with 35 U.S.C. 371 for purposes of eighteen-month
publication under 35 U.S.C. 122(b) and Sec. 1.211 et seq.
(4) The payment of the processing fee set forth in Sec. 1.492(i)
is required for acceptance of an English translation later than the
expiration of thirty months after the priority date. The payment of the
surcharge set forth in Sec. 1.492(h) is required for acceptance of any
of the search fee, the examination fee, or the inventor's oath or
declaration after the date of the commencement of the national stage
(Sec. 1.491(a)).
(5) A ``Sequence Listing'' need not be translated if the ``Sequence
Listing'' complies with PCT Rule 12.1(d) and the description complies
with PCT Rule 5.2(b).
* * * * *
(g) The documents and fees submitted under paragraphs (b) and (c)
of this section must be identified as a submission to enter the
national stage under 35 U.S.C. 371. If the documents and fees contain
conflicting indications as between an application under 35 U.S.C. 111
and a submission to enter the national stage under 35 U.S.C. 371, the
documents and fees will be treated as a submission to enter the
national stage under 35 U.S.C. 371.
(h) An international application becomes abandoned as to the United
States thirty months from the priority date if the requirements of
paragraph (b) of this section have not been complied with within thirty
months from the priority date.
0
58. Section 1.496 is revised to read as follows:
Sec. 1.496 Examination of international applications in the national
stage.
National stage applications having paid therein the search fee as
set forth in Sec. 1.492(b)(1) and examination fee as set forth in
Sec. 1.492(c)(1) may be amended subsequent to the date of commencement
of national stage processing only to the extent necessary to eliminate
objections as to form or to cancel rejected claims. Such national stage
applications will be advanced out of turn for examination.
0
59. Section 1.497 is revised to read as follows:
Sec. 1.497 Inventor's oath or declaration under 35 U.S.C. 371(c)(4).
(a) When an applicant of an international application desires to
enter the national stage under 35 U.S.C. 371 pursuant to Sec. 1.495,
and a declaration in compliance with Sec. 1.63 has not been previously
submitted in the international application under PCT Rule 4.17(iv)
within the time limits provided for in PCT Rule 26ter.1, the applicant
must file the inventor's oath or declaration. The inventor, or each
individual who is a joint inventor of a claimed invention, in an
application for patent must execute an oath or declaration in
accordance with the conditions and requirements of Sec. 1.63, except
as provided for in Sec. 1.64.
(b) An oath or declaration under Sec. 1.63 will be accepted as
complying with 35 U.S.C. 371(c)(4) if it complies with the requirements
of Sec. Sec. 1.63(a), (c) and (g). A substitute statement under Sec.
1.64 will be accepted as complying with 35 U.S.C. 371(c)(4) if it
complies with the requirements of Sec. Sec. 1.64(b)(1), (c) and (e)
and identifies the person executing the substitute statement. If a
newly executed inventor's oath or declaration under Sec. 1.63 or
substitute statement under Sec. 1.64 is not required pursuant to Sec.
1.63(d), submission of the
[[Page 48825]]
copy of the previously executed oath, declaration, or substitute
statement under Sec. 1.63(d)(1) is required to comply with 35 U.S.C.
371(c)(4).
(c) If an oath or declaration under Sec. 1.63, or substitute
statement under Sec. 1.64, meeting the requirements of Sec. 1.497(b)
does not also meet the requirements of Sec. 1.63 or Sec. 1.64, an
oath, declaration, substitute statement, or application data sheet in
accordance with Sec. 1.76 to comply with Sec. 1.63 or Sec. 1.64 will
be required.
0
60. Section 1.530 is amended by revising paragraph (l)(1) to read as
follows:
Sec. 1.530 Statement by patent owner in ex parte reexamination;
amendment by patent owner in ex parte or inter partes reexamination;
inventorship change in ex parte or inter partes reexamination.
* * * * *
(l) * * *
(1) When it appears in a patent being reexamined that the correct
inventor or inventors were not named, the Director may, on petition of
all the parties set forth in Sec. 1.324(b)(1) and (b)(2), including
the assignees, and satisfactory proof of the facts and payment of the
fee set forth in Sec. 1.20(b), or on order of a court before which
such matter is called in question, include in the reexamination
certificate to be issued under Sec. 1.570 or Sec. 1.997 an amendment
naming only the actual inventor or inventors. The petition must be
submitted as part of the reexamination proceeding and must satisfy the
requirements of Sec. 1.324.
* * * * *
0
61. Section 1.730 is amended by revising paragraph (b)(1) to read as
follows:
Sec. 1.730 Applicant for extension of patent term; signature
requirements.
* * * * *
(b) * * *
(1) The patent owner in compliance with Sec. 3.73(c) of this
chapter; or
* * * * *
PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
0
62. The authority citation for part 3 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
0
63. Section 3.31 is amended by adding new paragraph (h) to read as
follows:
Sec. 3.31 Cover sheet content.
* * * * *
(h) The assignment cover sheet required by Sec. 3.28 must contain
a conspicuous indication of an intent to utilize the assignment as the
required oath or declaration under Sec. 1.63 of this chapter.
0
64. Section 3.71 is amended by revising paragraphs (a), (b), and (c) to
read as follows:
Sec. 3.71 Prosecution by assignee.
(a) Patents--conducting of prosecution. One or more assignees as
defined in paragraph (b) of this section may conduct prosecution of a
national patent application as the applicant under Sec. 1.46 of this
title, or conduct prosecution of a supplemental examination or
reexamination proceeding, to the exclusion of the inventor or previous
applicant or patent owner. Conflicts between purported assignees are
handled in accordance with Sec. 3.73(c)(3).
(b) Patents--assignee(s) who can prosecute. The assignee(s) who may
conduct either the prosecution of a national application for patent as
the applicant under Sec. 1.46 of this title or a supplemental
examination or reexamination proceeding are:
(1) A single assignee. An assignee of the entire right, title and
interest in the application or patent, or
(2) Partial assignee(s) together or with inventor(s). All partial
assignees, or all partial assignees and inventors who have not assigned
their right, title and interest in the application or patent, who
together own the entire right, title and interest in the application or
patent. A partial assignee is any assignee having less than the entire
right, title and interest in the application or patent. The word
``assignee'' as used in this chapter means with respect to patent
matters the single assignee of the entire right, title and interest in
the application or patent if there is such a single assignee, or all of
the partial assignees, or all of the partial assignee and inventors who
have not assigned their interest in the application or patent, who
together own the entire right, title and interest in the application or
patent.
(c) Patents--Becoming of record. An assignee becomes of record as
the applicant in a national patent application under Sec. 1.46 of this
title, and in a supplemental examination or reexamination proceeding,
by filing a statement in compliance with Sec. 3.73(c) that is signed
by a party who is authorized to act on behalf of the assignee.
* * * * *
0
65. Section 3.73 is revised to read as follows:
Sec. 3.73 Establishing right of assignee to take action.
(a) The original applicant is presumed to be the owner of an
application for an original patent, and any patent that may issue
therefrom, unless there is an assignment. The original applicant is
presumed to be the owner of a trademark application or registration,
unless there is an assignment.
(b) In order to request or take action in a trademark matter, the
assignee must establish its ownership of the trademark property of
paragraph (a) of this section to the satisfaction of the Director. The
establishment of ownership by the assignee may be combined with the
paper that requests or takes the action. Ownership is established by
submitting to the Office a signed statement identifying the assignee,
accompanied by either:
(1) Documentary evidence of a chain of title from the original
owner to the assignee (e.g., copy of an executed assignment). The
documents submitted to establish ownership may be required to be
recorded pursuant to Sec. 3.11 in the assignment records of the Office
as a condition to permitting the assignee to take action in a matter
pending before the Office; or
(2) A statement specifying where documentary evidence of a chain of
title from the original owner to the assignee is recorded in the
assignment records of the Office (e.g., reel and frame number).
(c)(1) In order to request or take action in a patent matter, an
assignee who is not the original applicant must establish its ownership
of the patent property of paragraph (a) of this section to the
satisfaction of the Director. The establishment of ownership by the
assignee may be combined with the paper that requests or takes the
action. Ownership is established by submitting to the Office a signed
statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original
owner to the assignee (e.g., copy of an executed assignment). The
submission of the documentary evidence must be accompanied by a
statement affirming that the documentary evidence of the chain of title
from the original owner to the assignee was or concurrently is being
submitted for recordation pursuant to Sec. 3.11; or
(ii) A statement specifying where documentary evidence of a chain
of title from the original owner to the assignee is recorded in the
assignment records of the Office (e.g., reel and frame number).
(2) If the submission is by an assignee of less than the entire
right, title and interest (e.g., more than one assignee
[[Page 48826]]
exists) the Office may refuse to accept the submission as an
establishment of ownership unless:
(i) Each assignee establishes the extent (by percentage) of its
ownership interest, so as to account for the entire right, title and
interest in the application or patent by all parties including
inventors; or
(ii) Each assignee submits a statement identifying the parties
including inventors who together own the entire right, title and
interest and stating that all the identified parties own the entire
right, title and interest.
(3) If two or more purported assignees file conflicting statements
under paragraph (c)(1) of this section, the Director will determine
which, if any, purported assignee will be permitted to control
prosecution of the application.
(d) The submission establishing ownership under paragraph (b) or
(c) of this section must show that the person signing the submission is
a person authorized to act on behalf of the assignee by:
(1) Including a statement that the person signing the submission is
authorized to act on behalf of the assignee;
(2) Being signed by a person having apparent authority to sign on
behalf of the assignee; or
(3) For patent matters only, being signed by a practitioner of
record.
PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND
FILE APPLICATIONS IN FOREIGN COUNTRIES
0
66. The authority citation for 37 CFR part 5 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 41, 181-188, as amended by the
Patent Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418,
102 Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C.
2751 et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C.
2011 et seq.; the Nuclear Non Proliferation Act of 1978, 22 U.S.C.
3201 et seq.; and the delegations in the regulations under these
Acts to the Director (15 CFR 370.10(j), 22 CFR 125.04, and 10 CFR
810.7).
0
67. Section 5.25 is amended by revising paragraphs (a)(3)(iii) and (b)
to read as follows:
Sec. 5.25 Petition for retroactive license.
(a) * * *
(3) * * *
(iii) An explanation of why the material was filed abroad through
error without the required license under Sec. 5.11 first having been
obtained, and
* * * * *
(b) The explanation in paragraph (a) of this section must include a
showing of facts rather than a mere allegation of action through error.
The showing of facts as to the nature of the error should include
statements by those persons having personal knowledge of the acts
regarding filing in a foreign country and should be accompanied by
copies of any necessary supporting documents such as letters of
transmittal or instructions for filing. The acts which are alleged to
constitute error should cover the period leading up to and including
each of the proscribed foreign filings.
* * * * *
PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK
OFFICE
0
68. The authority citation for 37 CFR part 10 continues to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 31,
32, 41.
0
69. Section 10.23 is amended by removing and reserving paragraph
(c)(11).
Sec. 10.23 Misconduct.
* * * * *
(c) * * *
(11) [Reserved]
* * * * *
PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND
INTERFERENCES
0
70. The authority citation for 37 CFR part 41 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 132,
133, 134, 135, 306, and 315.
0
71. Section 41.9 is amended by revising paragraph (a) to read as
follows:
Sec. 41.9 Action by owner.
(a) Entire interest. An owner of the entire interest in an
application or patent involved in a Board proceeding may act in the
proceeding to the exclusion of the inventor (see Sec. Sec. 3.71 and
3.73 of this title).
* * * * *
Dated: July 17, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2012-17907 Filed 8-13-12; 8:45 am]
BILLING CODE 3510-16-P