USPTO Final Rules Implementing the Inventor's Oath or Declaration Provisions of the AIA | Practical Law

USPTO Final Rules Implementing the Inventor's Oath or Declaration Provisions of the AIA | Practical Law

On August 14, 2012, the US Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the Leahy-Smith America Invents Act (AIA).   

USPTO Final Rules Implementing the Inventor's Oath or Declaration Provisions of the AIA

by PLC Intellectual Property & Technology
Published on 14 Aug 2012 • USA (National/Federal)
On August 14, 2012, the US Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the Leahy-Smith America Invents Act (AIA).
On August 14, 2012, the USPTO issued final rules to implement the inventor's oath or declaration provisions of the AIA. The final rules adopt an assignee or inventor filing regime and permit a patent application to be filed and prosecuted by any of the following as an applicant:
  • An inventor.
  • A person to whom an inventor has assigned or is under an obligation to assign an invention.
  • A person who otherwise shows a proprietary interest in the matter.
Among other things, the final rules also:
  • Streamline the oath or declaration requirements.
  • Permit a substitute statement in lieu of an oath or declaration in certain circumstances.
  • Allow applicants to postpone filing the oath or declaration until allowance.
  • Make various changes to reissue practice.
The final rules are effective on September 16, 2012.

Patent Applicant

Contrary to the USPTO's January 2012 proposed rules, which adopted an inventor only filing regime, the final rules, based on public comment, adopt an inventor or assignee regime. The final rules permit a patent application to be filed and prosecuted by any of the following as an applicant:
  • An inventor.
  • A person to whom an inventor has assigned or is under an obligation to assign an invention.
  • A person who otherwise shows a proprietary interest in the matter.

Oath or Declaration Requirements

Based on public comments received on its proposed rules, the USPTO's final rules streamline several of the oath or declaration requirements, eliminating several requirements. The changes include revising Section 1.63 of Title 37 of the Code of Federal Regulations (CFR) to:
  • State that an inventor's oath or declaration need not indicate each inventor's name if the applicant provides an application data sheet with each inventor's:
    • legal name;
    • residence; and
    • mailing address.
  • Provide that a person may not execute an application oath or declaration unless that person has reviewed and understands the application's contents and is aware of the duty to disclose all information known to the person to be material to patentability as defined in Section 1.56 of Title 37 of the CFR.
  • Eliminate the requirements that:
    • any declaration under Section 115 of Title 35 of the US Code contain an acknowledgment that willful false statements may jeopardize the validity of the application or any patent issued from it; and
    • 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.
The USPTO will also no longer require the inventor to identify his country of citizenship in his oath or declaration.

Filing Postponement

Based on public comments on the proposed rules, the final rules permit applicants to 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 with each inventor's:
  • Name.
  • Residence.
  • Mailing address.
The USPTO will continue requiring a surcharge to recover the cost of the special processing and additional notices for original (non-reissue) applications that are not complete on filing. However, the USPTO will not require a fee in addition to the surcharge if the applicant provides a signed application data sheet with each inventor's:
  • Name.
  • Residence.
  • Mailing address.

Substitute Statement Changes

In its proposed rules, the USPTO required a petition with showings and a fee for applicants executing a substitute statement in lieu of an oath or declaration as required by former Section 1.47 of Title 37 of the CFR. The USPTO's final rules streamline several proposed substitute statement requirements for both the proposed and former requirements of Section 1.47. The final rules provide that for an assignee or obligated assignee filing the application as the applicant, the documentary evidence of ownership should be recorded as provided for in Part 3 of the CFR, no later than the date the issue fee is paid in the application.
Further, under the final rules, to be considered the applicant, a person who otherwise shows sufficient proprietary interest in the matter to file the application as the applicant must:
The final rules 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 the substitute statement in lieu of an oath or declaration if the applicant identifies:
  • The circumstances permitting him to execute the substitute statement.
  • The person executing the substitute statement with respect to the nonsigning inventor and their relationship to the nonsigning inventor.
  • The nonsigning inventor's last known address.

Reissue Practice Changes

Consistent with the amendments to Sections 115 and 251 of Title 35 of the US Code, the USPTO's final rules revise its reissue practice to allow more efficient reissue application processing and improve the quality of patents. The specific changes include:
  • Deleting the requirement for a reissue inventor's oath or declaration to include a statement that all errors arose without any deceptive intent on the applicant's part.
  • Eliminating the requirement for a supplemental inventor's oath or declaration.
  • Requiring the inventor's oath or declaration for a reissue application to identify a claim that the applications seeks to broaden if the reissue application seeks to enlarge the scope of the patent claims.
  • Clarifying that a single claim with both a broadening and a narrowing of the claimed invention is to be treated as a broadening.

Other Changes

Other changes made to the rules of practice by the final rules include changes for:
  • Power of attorney.
  • Prosecution of an application by an assignee.
  • Foreign priority and domestic benefit claims.
Juristic entities seeking to prosecute an application must do so through a registered practitioner.
The final rules also:
  • Streamline correction of inventorship.
  • Provide for the carryover of power of attorney in continuing applications, where no inventors are added in the continuing application.
  • Permit practitioners who have acted only in a representative capacity to change the correspondence address after a patent has issued.
  • Accept the signature of a practitioner of record on a statement under Section 3.73(c) of Title 37 of the CFR on behalf of an assignee without requiring further evidence of the practitioner's authority to act on the assignee's behalf.
  • Provide a procedure for handling conflicts between different purported assignees.
  • Harmonize the foreign priority claims practice with domestic benefit claims practice by requiring both claims to be set out in an application data sheet.