[Federal Register Volume 77, Number 157 (Tuesday, August 14, 2012)]
[Rules and Regulations]
[Pages 48775-48826]
From the Federal Register Online via the Government Printing 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