UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

UNIFORM CERTIFICATE OF ATTENDANCE FOR CLETo be completed by providerProvider: Oppedahl Patent Law Firm, LLCTitle of Activity: What will change about the oath or declaration on September 16, 2012Date of Activity: August 30, 2012Location: WebinarActivity Number: Colorado 732253 California 15406Total eligible CLE Credit Hours Colorado (50 – minute hour): 2Total eligible CLE Credit Hours California (60 – minute hour): 1.5To be completed by the Attorney after Participating in the Above-Named Activity:By signing below, I certify that I participated in the activity described above and am entitled to claimthe following CLE credit hours:Total hours:______________________________(you may not claim credit for the following sub-field unless the provider is granting credit in these areas above)Legal Ethics:_____________________________Print your name:__________________________Your State Bar Number:____________________Signature:__________________________________________________________________________________________________________________Acknowledged by:/Carl Oppedahl/Sponsor / Representative

USPTO explains the America Invents Acthttp://www.oppedahl.com/cle/aia/1 of 2 8/29/2012 5:46 AMUSPTO explains the America Invents ActAbout the webinar. We all know that the America Invents Act ("AIA") was signed into law in September of2011. We all know that USPTO has promulgated thousands of pages of new rules to implement the AIA. Someof the new rules take effect as early as September 16, 2012.In this webinar, you will hear, live and in person, from two people at the USPTO:Hiram Bernstein, Senior Legal Advisor,Office of Patent Legal Administration, USPatent and Trademark OfficeSally Lane, Administrative Patent Judge,USPTO Patent Trial and Appeal Board(formerly the Board of Patent Appealsand Interferences)These USPTO people will give an overview of the upcoming changes, and will respond to audience questions.Topics to be discussed include:oath or declaration of the inventorssupplemental examinationpost-grant review proceedingsinter partes reviewestoppel provisions arising out of ex parte reexams commenced after final decisions in other proceedingsThe price is right! This webinar is free of charge. Tell all your friends about it. But enrollment is limited to onethousand attendees. Don't get left out by waiting too long to register for this webinar.When? Thursday, September 6, 2012, 11:00 AM to 1:00 PM Mountain Time. This is the same as:10:00 AM to noon Pacific Timenoon to 2:00 pm Central Time1:00 PM to 3:00 PM Eastern TimeThe program will be moderated by Carl Oppedahl, a partner in OPLF.CLE accreditation?CLE accreditation has been approved for California for 2 credits and for Colorado for 2 credits. Inthe short time between now and the webinar, it is unlikely that we will obtain accreditation in anyadditional states. We will provide a uniform certificate of attendance ("UCOA"). In the past we have sometimesheard from an attendee that he or she has been able to obtain CLE credit in his or her own state by submittingthe UCOA to his or her own CLE authority. Please do not ask us to try to obtain CLE accreditation from otherstates.In any event the way you will receive CLE credit, if at all, is by submitting the UCOA yourself to your state CLEagency.Cost? The webinar is free of charge.How to sign up? To register for this program, go to the webinar registration page.

SPTO explains the America Invents Acthttp://www.oppedahl.com/cle/aia/2 of 2 8/29/2012 5:46 AMFormat. This program is a webinar, meaning a seminar offered over the Web. It is anticipated that at some lawfirm and corporate locations, the presentation-slide content of the webinar will be projected upon a screen in aconference room. Other attendees will view the presentation on their own computers.Participants will be able to submit typed questions through the webinar system.After the webinar has finished, participants will be requested to complete an online evaluation form. Writtenmaterials will be provided (as a PDF file) about a day before the program.Audio will be provided both through computer speakers and by means of dial-in telephone numbers. A userwith a computer headset can use the headset to listen to the audio. Many attendees will find it convenient toreceive the audio through their computer speakers, which is free of any per-minute charge. It will also bepossible to dial in to a telephone conference bridge to receive the audio; this will be a toll call with regularper-minute long-distance telephone charges.Cutoff time for registrations. Attendance is limited to one thousand attendees. The ability to register for thewebinar will be turned off when one thousand attendees have registered, or two hours in advance of the statedstarting time of the webinar, whichever is first.

PTO// (06-12)Approved for use through 01/31/2014. OMB 0651-0032U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCEUnder the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.DECLARATION (37 CFR 1.63) FOR UTILITY OR DESIGN APPLICATION USING ANAPPLICATION DATA SHEET (37 CFR 1.76)Title ofInventionAs the below named inventor, I hereby declare that:This declarationis directed to:The attached application, orUnited States application or PCT international application number ____________________filed on ________________________________ The above-identified application was made or authorized to be made by me.I believe that I am the original inventor or an original joint inventor of a claimed invention in the application.I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001by fine or imprisonment of not more than (5) years, or both.WARNING:Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that maycontribute to identity theft. Personal information such as social security numbers, bank account numbers, or credit card numbers(other than a check or credit card authorization form PTO-2038 submitted for payment purposes) is never required by the USPTOto support a petition or an application. If this type of personal information is included in documents submitted to the USPTO,petitioners/applicants should consider redacting such personal information from the documents before submitting them to theUSPTO. Petitioner/applicant is advised that the record of a patent application is available to the public after publication of theapplication (unless a non-publication request in compliance with 37 CFR 1.213(a) is made in the application) or issuance of apatent. Furthermore, the record from an abandoned application may also be available to the public if the application isreferenced in a published application or an issued patent (see 37 CFR 1.14). Checks and credit card authorization formsPTO-2038 submitted for payment purposes are not retained in the application file and therefore are not publicly available.LEGAL NAME OF INVENTORInventor: ___________________________________________________Date (Optional) :_______________________Signature: ________________________________________________________________________________________Note: An application data sheet (PTO/SB/14 or equivalent), including naming the entire inventive entity, must accompany this form.Use an additional PTO/A/ form for each additional inventor.This collection of information is required by 35 U.S.C. 115 and 37 CFR 1.63. The information is required to obtain or retain a benefit by the public which is to file (andby the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 1 minute tocomplete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Anycomments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S.Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TOTHIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.

PTO/SB/01A (01-09)Approved for use through 01/31/2014. OMB 0651-0032U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCEUnder the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.DECLARATION (37 CFR 1.63) FOR UTILITY OR DESIGN APPLICATION USING ANAPPLICATION DATA SHEET (37 CFR 1.76)Title ofInventionAs the below named inventor(s), I/we declare that:This declarationis directed to:The attached application, orUnited States application or PCT international application number ____________________filed on ________________________________As amended on __________________________________________ (if applicable);I/we believe that I/we am/are the original and first inventor(s) of the subject matter which is claimed and for which a patent issought;I/we have reviewed and understand the contents of the above-identified application, including the claims, as amended by anyamendment specifically referred to above;I/we acknowledge the duty to disclose to the United States Patent and Trademark Office all information known to me/us to bematerial to patentability as defined in 37 CFR 1.56, including for continuation-in-part applications, material information whichbecame available between the filing date of the prior application and the national or PCT International filing date of thecontinuation-in-part application.WARNING:Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that maycontribute to identity theft. Personal information such as social security numbers, bank account numbers, or credit cardnumbers (other than a check or credit card authorization form PTO-2038 submitted for payment purposes) is never required bythe USPTO to support a petition or an application. If this type of personal information is included in documents submitted to theUSPTO, petitioners/applicants should consider redacting such personal information from the documents before submitting themto the USPTO. Petitioner/applicant is advised that the record of a patent application is available to the public after publicationof the application (unless a non-publication request in compliance with 37 CFR 1.213(a) is made in the application) or issuanceof a patent. Furthermore, the record from an abandoned application may also be available to the public if the application isreferenced in a published application or an issued patent (see 37 CFR 1.14). Checks and credit card authorization formsPTO-2038 submitted for payment purposes are not retained in the application file and therefore are not publicly available.All statements made herein of my/our own knowledge are true, all statements made herein on information and belief arebelieved to be true, and further that these statements were made with the knowledge that willful false statements and the likeare punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and may jeopardize the validity of the application or anypatent issuing thereon.FULL NAME OF INVENTOR(S)Inventor one: _____________________________________________________Date: _______________________________Signature: _______________________________________________________Citizen of: ____________________________Inventor two: _____________________________________________________Date: _______________________________Signature: _______________________________________________________Citizen of: ____________________________Additional inventors or a legal representative are being named on _______________________additional form(s) attached hereto.This collection of information is required by 35 U.S.C. 115 and 37 CFR 1.63. The information is required to obtain or retain a benefit by the public which is to file (andby the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 1 minute tocomplete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Anycomments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S.Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TOTHIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.

Doc code: OathDocument Description: Oath or declaration filedPTO/ (06-12)Approved for use through 01/31/2014. OMB 0651-0032U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCEUnder the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.SUBSTITUTE STATEMENT IN LIEU OF AN OATH OR DECLARATION FOR UTILITY OR DESIGN PATENT APPLICATION(35 U.S.C. 115(d) AND 37 CFR 1.64)Title ofInventionThis statement is directed to:The attached application,ORUnited States application or PCT international application number ____________________ filed on ___________________.LEGAL NAME of inventor to whom this substitute statement applies:(E.g., Given Name (first and middle (if any)) and Family Name or Surname)Residence (except for a deceased or legally incapacitated inventor):City State CountryMailing Address (except for a deceased or legally incapacitated inventor):City State Zip CountryI believe the above-named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed inventionin the application.The above-identified application was made or authorized to be made by me.I hereby acknowledge that any willful false statement made in this statement is punishable under 18 U.S.C. 1001 by fine orimprisonment of not more than five (5) years, or both.Relationship to the inventor to whom this substitute statement applies:Legal Representative (for deceased or legally incapacitated inventor only),Assignee,Person to whom the inventor is under an obligation to assign,Person who otherwise shows a sufficient proprietary interest in the matter (petition under 37 CFR 1.46 is required), orJoint Inventor.[Page 1 of 2]This collection of information is required by 35 U.S.C. 115 and 37 CFR 1.63. The information is required to obtain or retain a benefit by the public which is to file (andby the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 1 minute tocomplete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Anycomments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S.Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TOTHIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.

PTO/SB/ (06-12)Approved for use through 01/31/2014. OMB 0651-0032U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCEUnder the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.SUBSTITUTE STATEMENTCircumstances permitting execution of this substitute statement:Inventor is deceased,Inventor is under legal incapacity,Inventor cannot be found or reached after diligent effort, orInventor has refused to execute the oath or declaration under 37 CFR 1.63.If there are joint inventors, please check the appropriate box below:An application data sheet under 37 CFR 1.76 (PTO/SB/14 or equivalent) naming the entire inventive entity has beenor is currently submitted.ORAn application data sheet under 37 CFR 1.76 (PTO/SB/14 or equivalent) has not been submitted. Thus, a SubstituteStatement Supplemental Sheet (PTO/ or equivalent) naming the entire inventive entity and providing inventorinformation is attached. See 37 CFR 1.64(b).WARNING:Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that maycontribute to identity theft. Personal information such as social security numbers, bank account numbers, or credit card numbers(other than a check or credit card authorization form PTO-2038 submitted for payment purposes) is never required by the USPTOto support a petition or an application. If this type of personal information is included in documents submitted to the USPTO,petitioners/applicants should consider redacting such personal information from the documents before submitting them to theUSPTO. Petitioner/applicant is advised that the record of a patent application is available to the public after publication of theapplication (unless a non-publication request in compliance with 37 CFR 1.213(a) is made in the application) or issuance of apatent. Furthermore, the record from an abandoned application may also be available to the public if the application isreferenced in a published application or an issued patent (see 37 CFR 1.14). Checks and credit card authorization formsPTO-2038 submitted for payment purposes are not retained in the application file and therefore are not publicly available.PERSON EXECUTING THIS SUBSTITUTE STATEMENT:Name:Date (Optional):Signature:Residence (unless provided in an application data sheet, PTO/SB/14 or equivalent):CityStateCountryMailing Address (unless provided in an application data sheet, PTO/SB/14 or equivalent)City State ZipCountryNote: Use an additional PTO/ form for each inventor who is deceased, legally incapacitated, cannot be found orreached after diligent effort, or has refused to execute the oath or declaration under 37 CFR 1.63.[Page 2 of 2]

Doc Code: OathDocument Description: Oath or declaration filedPTO/ (06-12)Approved for use through 01/31/2014. OMB 0651-0032U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCEUnder the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.DECLARATION FOR UTILITY ORDESIGNPATENT APPLICATION(37 CFR 1.63)DeclarationSubmittedWith InitialFilingORDeclarationSubmitted After InitialFiling (surcharge(37 CFR 1.16(f))required)Attorney DocketNumberFirst Named InventorApplication NumberFiling DateArt UnitExaminer NameCOMPLETE IF KNOWNAs a below named inventor, I hereby declare that:(Title of the Invention)This declaration is directed to:The attached application,ORUnited States Application Number or PCT International application number ___________________________________filed on __________________________.The above-identified application was made or authorized to be made by me.I believe I am the original inventor or an original joint inventor of a claimed invention in the application.I hereby acknowledge that any willful false statement made in this declarationis punishable under 18 U.S.C. 1001by fine or imprisonment of not more than five (5) years, or both.Authorization To Permit Access To Application by Participating OfficeIf checked, the undersigned hereby grants the USPTO authority to provide the European Patent Office (EPO), theJapan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the World Intellectual Property Office (WIPO), andany other intellectual property offices in which a foreign application claiming priority to the above-identified patent application isfiled access to the above-identified patent application. See 37 CFR 1.14(c) and (h). This box should not be checked if theapplicant does not wish the EPO, JPO, KIPO, WIPO, or other intellectual property office in which a foreign application claimingpriority to the above-identified patent application is filed to have access to the above-identified patent application.In accordance with 37 CFR 1.14(h)(3), access will be provided to a copy of the above-identified patent application with respectto: 1) the above-identified patent application-as-filed; 2) any foreign application to which the above-identified patent applicationclaims priority under 35 U.S.C. 119(a)-(d) if a copy of the foreign application that satisfies the certified copy requirement of37 CFR 1.55 has been filed in the above-identified patent application; and 3) any U.S. application-as-filed from which benefit issought in the above-identified patent application.In accordance with 37 CFR 1.14(c), access may be provided to information concerning the date of filing the Authorization toPermit Access to Application by Participating Offices.[Page 1 of 2]This collection of information is required by 35 U.S.C. 115 and 37 CFR 1.63. The information is required to obtain or retain a benefit by the public which is to file (and bythe USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 21 minutes tocomplete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Anycomments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S.Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THISADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.

PTO/ (06-12)Approved for use through 01/31/2014. OMB 0651-0032U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCEUnder the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.DECLARATION — Utility or Design Patent ApplicationDirect allcorrespondence to:NameThe addressassociated withCustomer Number:ORCorrespondenceaddress belowAddressCityStateZipCountry Telephone EmailWARNING:Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that maycontribute to identity theft. Personal information such as social security numbers, bank account numbers, or credit card numbers(other than a check or credit card authorization form PTO-2038 submitted for payment purposes) is never required by the USPTOto support a petition or an application. If this type of personal information is included in documents submitted to the USPTO,petitioners/applicants should consider redacting such personal information from the documents before submitting them to theUSPTO. Petitioner/applicant is advised that the record of a patent application is available to the public after publication of theapplication (unless a non-publication request in compliance with 37 CFR 1.213(a) is made in the application) or issuance of apatent. Furthermore, the record from an abandoned application may also be available to the public if the application isreferenced in a published application or an issued patent (see 37 CFR 1.14). Checks and credit card authorization formsPTO-2038 submitted for payment purposes are not retained in the application file and therefore are not publicly available.Petitioner/applicant is advised that documents which form the record of a patent application (such as the PTO/SB/01) are placedinto the Privacy Act system of records DEPARTMENT OF COMMERCE, COMMERCE-PAT-7, System name: Patent ApplicationFiles . Documents not retained in an application file (such as the PTO-2038) are placed into the Privacy Act system ofCOMMERCE/PAT-TM-10, System name: Deposit Accounts and Electronic Funds Transfer Profiles .LEGAL NAME OF SOLE OR FIRST INVENTOR:(, Given Name (first and middle if any) and Family Name or Surname)Inventor's SignatureDate (ptional)Residence: City State CountryMailing AddressCity State Zip CountryAdditional inventors are being named on thesupplemental sheet(s) PTO/ attached hereto[Page 2 of 2]

PTO/ (06-12)Approved for use through 01/31/2014. OMB 0651-0032U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCEUnder the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.SUPPLEMENTAL SHEET FOR DECLARATIONLegal Name of Additional Joint Inventor, if any:(, Given Name (first and middle (if any)) and Family Name or Surname)ADDITIONAL INVENTOR(S)Supplemental Sheet (for PTO/)Page _ofInventor’sSignatureDate (Optional)Residence: City State CountryMailing AddressCity State Zip CountryLegal Name of Additional Joint Inventor, if any:(, Given Name (first and middle (if any)) and Family Name or Surname)Inventor’sSignatureDate (Optional)Residence: City State CountryMailing AddressCity State Zip CountryLegal Name of Additional Joint Inventor, if any:(, Given Name (first and middle (if any)) and Family Name or Surname)Inventor’sSignatureDate (Optional)Residence: City State CountryMailing AddressCity State Zip CountryThis collection of information is required by 35 U.S.C. 115 and 37 CFR 1.63. The information is required to obtain or retain a benefit by the public which is to file(and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 21minutes to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individualcase. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief InformationOfficer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETEDFORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.If you need assistance in completing the form, call 1-800-PTO-9199 (1-800-786-9199) and select option 2.

PTO/(06-1Approved for use through 01/31/2014. OMB 0651-0032U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCEUnder the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.SUBSTITUTE STATEMENT SUPPLEMENTAL SHEETNote: List entire inventive entity in the desired order.Legal Name of Joint Inventor:(E.g., Given Name (first and middle (if any)) and Family Name or Surname)INVENTOR(S)Supplemental Sheet (for PTO/)Page _ofInventor’sSignatureDate (Optional)Residence: City State CountryMailing AddressCity State Zip CountryLegal Name of Joint Inventor:(E.g., Given Name (first and middle (if any)) and Family Name or Surname)Inventor’sSignatureDate (Optional)Residence: City State CountryMailing AddressCity State Zip CountryLegal Name of Joint Inventor:(E.g., Given Name (first and middle (if any)) and Family Name or Surname)Inventor’sSignatureDate (Optional)Residence: City State CountryMailing AddressCity State Zip CountryThis collection of information is required by 35 U.S.C. 115 and 37 CFR 1.63. The information is required to obtain or retain a benefit by the public which is to file(and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 21minutes to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individualcase. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief InformationOfficer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETEDFORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.If you need assistance in completing the form, call 1-800-PTO-9199 (1-800-786-9199) and select option 2.

Sheet No. . . . . . . .Box No. VIII (iv) DECLARATION: INVENTORSHIP (only for the purposes of the designation of the United States of America)The declaration must conform to the following standardized wording provided for in Section 214; see Notes to Boxes Nos. VIII, VIII (i) to (v)(in general) and the specific Notes to Box No.VIII (iv). If this Box is not used, this sheet should not be included in the request.Declaration of inventorship (Rules 4.17(iv) and 51bis.1(a)(iv))for the purposes of the designation of the United States of America:I hereby declare that I believe I am the original, first and sole (if only one inventor is listed below) or joint (if more than one inventoris listed below) inventor of the subject matter which is claimed and for which a patent is sought.This declaration is directed to the international application of which it forms a part (if filing declaration with application).This declaration is directed to international application No. PCT/ . . . . . . . . . . . . . . . . . . . . . . . . . . . . . (if furnishing declaration pursuantto Rule 26ter).I hereby declare that my residence, mailing address, and citizenship are as stated next to my name.I hereby state that I have reviewed and understand the contents of the above-identified international application, including the claimsof said application. I have identified in the request of said application, in compliance with PCT Rule 4.10, any claim to foreign priority,and I have identified below, under the heading “Prior Applications,” by application number, country or Member of the World TradeOrganization, day, month and year of filing, any application for a patent or inventor’s certificate filed in a country other than the UnitedStates of America, including any PCT international application designating at least one country other than the United States of America,having a filing date before that of the application on which foreign priority is claimed.Prior Applications: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .I hereby acknowledge the duty to disclose information that is known by me to be material to patentability as defined by37 C.F.R. § 1.56, including for continuation-in-part applications, material information which became available between the filing dateof the prior application and the PCT international filing date of the continuation-in-part application.I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and beliefare believed to be true; and further that these statements were made with the knowledge that willful false statements and the like somade are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willfulfalse statements may jeopardize the validity of the application or any patent issued thereon.Name: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .Residence: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .(city and either US state, if applicable, or country)Mailing Address: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .Citizenship: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .Inventor’s Signature: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Date: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .(The signature must be that of the inventor, not that of the agent)Name: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .Residence: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .(city and either US state, if applicable, or country)Mailing Address: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .Citizenship: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .Inventor’s Signature: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Date: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .(The signature must be that of the inventor, not that of the agent)This declaration is continued on the following sheet, “Continuation of Box No. VIII (iv)”.Form PCT/RO/101 (declaration sheet (iv)) (July 2012)See Notes to the request form

What will change about the oath ordeclaration on September 16, 2012WebinarThursday, August 30, 2012Carl OppedahlOppedahl Patent Law Firm LLC© 2012 OPLF1Format of presentation●This is a webinar●Feel free to post questions while the webinar istaking place●No need to save questions until the end●●The webinar will take about one and a halfhoursPlease be sure to complete your evaluationquestionnaire2●●●Please keep in mind ...This is not legal advice. If you want legaladvice, please consult competent counsel whocan take into account your detailed factualsituationThis presentation is based upon sixteen days ofstudy of a complicated rules package. Someprovisions of the rules are likely to beinterpreted for the first time by USPTO only inthe futureWell-intentioned persons may read the rulespackage and arrive at non-identical conclusions3

Important AIA webinar September 6●Hear directly from two USPTO people about theeffects of the America Invents Act●Free of charge! For more information seehttp://www.oppedahl.com/cle/aia/4●Why we are here?We are here because of two important events:The President signed the America Invents Acton September 16, 2011, which includesstatutory changes regarding oath anddeclaration and non-inventor applicants● The USPTO published the Rules on August 14,2012 implementing these statutory changes(and doing other things that Congress did notask USPTO to do)5●●●●The new Rules foroath and declarationThe new rules change everything about theoath and declarationThey change what forms to useThey change who can be an applicantThey change the procedures that practitionersneed to follow6

Action item●●●If you have not already done so, you should jointhe EFS-Web-L listserv (email discussiongroup)The group discusses e-filing at the USPTO andother issues that arise in daily patent practice inthe USYou can always unsubscribe later if you wish● See http://www.oppedahl.com/listserves87Our main topics...●●●●●●●●Content and procedure of the oath or declarationThe Application Data SheetNon-inventor applicantsUnavailable and uncooperative inventorsDocket consequencesNew Rule-46 practiceFiling of international (PCT) patent applicationsEntry into the US national phase from an international(PCT) patent application● Random changes by USPTOContent and procedure of the oathor declaration9

USPTO has posted some forms● http://www.uspto.gov/forms/aia_forms_preview.jsp1110If you have N inventors ...Filing date of application Before September 16, 2012 On or after September 16,2012How many inventordocuments are filed?Does the declaration take aposition on who the otherinventors are?One declaration with Nsignatures lines, onesignature line for eachinventorYesHow many “magic words”? 203 90Form PTO/SB/01A PTO/AIA/01Citizenship stated in form? Yes NoOne form for each inventor,each with one signature lineand one signatureNoWhen an inventor cannotbe found or refuses to sign?Rule 47 practiceForm PTO/AIA/02(“Substitute Statement”)●●●●●What's gone from the “new language”Declaration?Inventor no longer professes a belief to be the“first” inventorThis makes sense given that AIA changes it to“first inventor to file” rather than “first inventor”The document does not say that the inventor“reviewed and understood” the applicationThe document does not say that the inventoracknowledges the duty of disclosureNo requirement that foreign priority applicationsbe set forth in the Declaration12

But 37 CFR § 1.63 says:A person may not execute an oath or declarationfor an application unless that person:●●has reviewed and understands the contents ofthe application, andis aware of the duty to disclose to the Office allinformation known to the person to be materialto patentability as defined in 37 CFR § 1.56.Best Practice: use the standard form, and coverthis with each inventor verbally or in a separatedocument, ideally signed by the inventor and keptin your file13●●What's new in the “new language”Declaration?The “new language” Declaration is required tostate that the application was made or wasauthorized to be made by the person executingthe DeclarationThis, unfortunately, is why an “old language”Declaration cannot be used in a “new”application14●●●●Foot-dragging on the inventors'DeclarationsYou can drag your feet on the inventors'Declarations until the Notice of Allowability ismailedThen you will have only a short-fuse time period(a non-extendable three months) to scramblearound and collect the needed signaturesOtherwise the application will go abandonedYou might get stuck filing a continuation toavoid loss of all rights15

Consequences of foot-dragging onthe inventors' Declarations●Every month that you drag your feet onrounding up the signature of an inventor on hisor her Declaration …●●You increase the risk that the inventor maydisappearYou increase the risk that some event may promptthe inventor to refuse to cooperate16Combined declaration and power ofattorney●●Except in the rare case where the inventor isactually the client of the practitioner, thereshould not be any power-of-attorney languagein the inventor's declarationExcept in the rare case where the inventor isactually the client of the practitioner, thereshould not be any correspondence-addresslanguage in the inventor's declaration17●●●Combined assignment anddeclarationThe AIA encourages the use of a combinedassignment and declaration of inventorshipThe combined document will serve its functionas a declaration, however, only if it is recordedat the USPTO (Section 115(e))If the client prefers not to record, or wishes topostpone recordation, then the two documentsshould not be combined in one18

●●●Combined assignment anddeclarationThere is a procedure for paper filing by whichthe filer can hand in the combined documentonce and have it serve both purposes(checking a particular check box on a form)It is not a Best Practice to paper-file. Why?If a combined document is to be used, then theBest Practice is to e-file the document in EPAS(for its purpose as an assignment) in addition toe-filing the document in EFS-Web (for itspurpose as a declaration)19Recording assignments●●Keep in mind that it is a Best Practice to recordany Assignment no later than three monthsafter the date that it was executedOne risks liability if one permits an executedAssignment to go unrecorded for more thanthree months (35 USC § 261)20Reuse of declaration from parent case●●●We are accustomed to being able to reuse anoath or declaration from a parent case whenfiling a continuation or divisional applicationIf you are filing a child case that requires a “newlanguage” declaration, then you will be able toreuse the declaration from the parent case onlyif it is also a “new language” declarationIf the parent case has an “old language”declaration then you may wish to try to use anRCE instead of a continuation21

Reuse of declaration from parent case●If the parent case has an “old language”declaration and if an inventor cannot be foundor will not cooperate, keep in mind thatSubstitute Statement practice may be employedand is often less onerous than legacy Rule 47practice22●●●●At what point are you required to spillthe beans on who the inventor is?Although you can postpone handing in theDeclarations of the inventors until the Notice ofAllowability …You are not permitted to postpone spilling thebeans on who the inventor is for very longWhy?The Examining Corps need to know who theinventors are so that it can know what is thework of “another”23●●●How do you spill the beans on whothe inventor is?The normal way to spill the beans on who theinventor is is to file an ADSYou can also do this through a (long-form)Declaration or OathOPAP (or DO/EO) will not release theapplication to the Examining Corps until youhave spilled the beans24

●●●●●●Consequences of incorrectidentification of inventorsAs mentioned, the Examining Corps needs to know who theinventors are to be able to examine the case (knowing what isthe work of another)Changing the inventor list during prosecution imposes extraburdens upon the Examining CorpsUSPTO plans to charge a punitive fee for such changes if madeafter the FOAM (first office action on the merits)USPTO plans to reduce PTA due to applicant delay in updatingthe applicant list promptlyBest Practice is to get it right the first timeBest Practice is to monitor the FOAP (first office actionprediction) and try very hard to get any inventor-list correctionsdone before the FOAM25Modifications to the application afterthe Declaration is signed?● The new Rules eliminate the prohibition (37CFR § 10.23) against modifying the applicationafter the Declaration is signed●This permits modifying the application after theDeclaration is signed● For some practitioners this will make the $130late-declaration fee a thing of the past● Some practitioners are interpreting this broadly2726Forms PTO/AIA/08 and 10●●●●Declaration with multiple inventor namesUsable without an ADSBut only in the rare case where there are noforeign priority claims, no domestic benefitclaims, and no non-inventor applicantUse of Form PTO/AIA/08 will be rare

The Application Data Sheet28Application Data Sheets●●●Under the new Rules, an ADS is mandatory innearly all patent applications filed on and afterSeptember 16, 2012The sole exception is a patent application thathas no foreign priority claims and has nodomestic benefit claims (Sections 119e and120) and that does not have a non-inventorapplicantThe Best Practice going forward is to prepareand file an ADS in all non-provisional patentapplications29How to file the ADSs●●●●The rules permit filing an ADS as scanned pageimagesWith such an ADS, it is up to USPTO personnelto hand-key the bibliographic data into PalmThis offers many opportunities for error andomissionEach error or omission will require filing arequest for a corrected Filing Receipt, anddocketing to check whether the correction wasmade correctly30

How to file the ADSs●●If you prepare the ADS as a computer-readableform (Form PTO/SB/08A or the successor FormPTO/AIA/ something ) and if you e-file it in EFS-Web in the first EFS-Web submission for theapplication …Then the bibliographic data will automaticallyload into Palm, and will be correct in Palm fromthat point forward● This is clearly a Best Practice3231After you e-file the computerreadableADS ...●●●When you e-file the computer-readable ADS inthe first submission for the application, you willfor the first time receive the US applicationnumberYou can then look in Private PAIR to see thePublication Review pageIt is a Best Practice to check the PublicationReview page carefully for accuracy● Ask for correction if necessary33●●If you fail to include the computerreadableADS in the first e-filingsubmission...Then nothing will auto-loadThis is not a Best Practice

PDX and DAS●●●Previously, the authorization for PDX and DAS(form PTO/SB/39) was required to be on aseparate sheetNow this authorization may be accomplished bychecking a box in the ADSDoing this with an ADS that will auto-load intoPalm is a Best Practice34ADS details●●●ADS must be signed (cannot be filed unsigned)It may be signed by the applicantThe new Rules make clear that the inventorpostal address may be:●●●where the inventor worksa post office boxother address where mail is received even if it is notthe main mailing address of the inventor35USPTO standard ADS form?●●As of press time, USPTO had not yet posted itsstandard (computer-readable) ADS formUSPTO will likely post this form only shortlybefore September 16, 201236

Supplemental ADSAny ADS filed after the first ADS is, bydefinition, a supplemental ADS. A supplementalADS contains only the things that changed, anddoes not repeat the things that are unchanged.It shows the changed information withstrikethroughs and underscores. You create asupplemental ADS in your word processor.37Supplemental ADS●●It is important to realize that the computerreadableADS is never used twiceAny ADS that follows the first ADS will be aSupplemental ADS that is created in the wordprocessor38Supplemental ADS is simplified●●The old rule required that in the case of asupplemental ADS, the filer was required toprovide all of the old information all over again,including all section headings, as well as thenew informationThe new rule says the supplemental ADS mayomit the items that are unchanged and is onlyrequired to specify what is being changed39

An example of a Supplemental ADS40checking the Publication Reviewpage carefully for accuracy●The Pub Review page should also be providedto the client or to foreign instructing counsel (asthe case may be) so that it may independentlyreview the Pub Review page for accuracy41checking the Publication Reviewpage carefully for accuracy●●●If any mistake or omission is found in the PubReview page …then it is a Best Practice to request correctionas soon as possibleIdeally any mistake or omission will getcorrected before the Filing Receipt is mailed42

Provisionals●●●Rules are a bit fuzzy on whether you can usean ADS instead of a Provisional Cover SheetI believe you can use either oneJoin the EFS-Web listserv for furtherdiscussions on this point43Non-inventor applicants44Suppose you are (a) an assignee or (b) an obligatedassignee or (c) a SPI (party that has shown a sufficientproprietary interest under Rule 46). What can you do?●●You can sign a Substitute StatementYou can become a non-inventor ApplicantNote that these are not at all the same thing.You can do one and not the other, in anyparticular patent application.45

●●Assignees can be applicantsA common thread through the changes thatfollow is …Non-inventors can be applicantsThe party permitted to apply can be:●●●The assigneeThe party to which the inventor has an obligation toassignA party that otherwise shows a sufficient proprietaryinterest (petition under Rule 46)46Best Practice●●●It is clear from this discussion that it is a BestPractice for the would-be juristic applicant tomake absolutely sure that each inventor:●●has assigned oris under an obligation to assignThis obligation needs to be in writing and thedocument needs to be kept in a safe place sothat it can be found when neededIf it is an assignment, there are reasons torecord it within three months of execution47Things that non-inventor Applicantscan do●●●●●●●●●Signing a Terminal DisclaimerSigning a Substitute StatementSigning the Application Data SheetGrant access to an assignment recordGrant access to a non-published applicationSigning a Small Entity statementGrant or revoke a Power of AttorneySigning a Rule 3.73 statementChanging a Correspondence Address (form SB122)48

Are all assignees applicants?●●●●Under AIA, is it always the case that anassignee of all rights is the applicant?No. The assignee might choose not to becomethe applicantIn such a case, the applicant is (just as in thepast) simply all of the inventorsThis is an odd situation, given that the inventorspresumably have given up standing to file byassigning49Non-inventor applicant must berepresentedby a practitioner●●●If the applicant is a juristic entity (if it is otherthan a human being) then it may not proceedpro se before the USPTOSuch an applicant must be represented by aregistered practitionerThis might be a reason for an assignee tochoose not to be (or to become) the applicant50Free pass on the 3.73 statement● We are accustomed to having to provide a 3.73statement any time a Power of Attorney is filed●●The August 14 rules package makes clear thatin the case where there is a non-inventorapplicant, the non-inventor applicant may signthe Power of Attorney and in that case, there isno need for a 3.73 statementI imagine USPTO will redesign Form SB/80 toreflect this option for skipping the 3.73statement51

When paying the Issue Fee ...● When there is a non-inventor applicant ...●●●Then at time of paying the Issue Fee, theUSPTO must be told if the RPI (real party ininterest) has changedOtherwise USPTO will assume that theapplicant is the RPIIf you don't want to have to update the RPI,then don't use a non-inventor applicant52Unavailable and uncooperativeinventors53●●●●When inventor cannot be found orrefuses to signLegacy approach is Rule 47 practiceRule 47 practice was fraught with problemsIt was commonplace for OPAP or DO/EO torequire supplemental declarations etc.New practice is “Substitute Statement” (FormPTO/AIA/02)54

Substitute Statement●●●This form is easy to sign and fileThis form is particularly easy to sign and file inthe case where there is an Assignee or anObligated AssigneeNo longer do you need to set forth facts tendingto show that the person refused to sign andknew what they were refusing to sign55Substitute Statement●●●Keep in mind that the Substitute Statementpractice does not eliminate the need for factualinquiry and preservation of evidence as informer Rule 47 practiceIt merely postpones review of such facts andevidence until litigation timeThe applicant should preserve such evidence inits own files in case it is needed at litigation time● Does not serve to quiet title5756●●●Who should sign the SubstituteStatement?From USPTO's point of view, the signer of theSubstitute Statement can be anyone withknowledge of the factsIn some cases one of the possible signersmight be the attorney or agentKeep in mind that during litigation the signer willlikely be a fact witness and will likely bedeposed at length

●●Who may sign a SubstituteStatement?One potential signer of a Substitute Statementis a party that is an assignee or obligatedassignee or SPI partyNote that such a party can sign the SubstituteStatement even if that party has not become, orhas chosen not to become, an Applicant58●●Who may sign a SubstituteStatement?Another potential signer of a SubstituteStatement is the entire inventive entityThis is the purpose of Form PTO/AIA/11 whencombined with Form PTO/AIA/0259Docket consequences60

●●●Docket consequences of the NewRulesOne important consequence is that you mustscrutinize the Notice of Allowability (not thesame thing as the Notice of Allowance) closelyto see what requirements it imposesIf it says that an inventor declaration is missing,then this must be docketed aggressivelyFailure to hand in the missing signeddeclaration timely will result in abandonment61●●Docket consequences of the NewRulesAnother important consequence is that youmust make sure that if the declarations do notget filed until Notice of Allowability time, it is notyour faultSend periodic reminders of the need for theinventors to sign the declarations62Changing order of inventors?Under legacy practice, changing the sequenceof inventors during prosecution required apetition and a $400 fee.Under the new Rules, such a change onlyrequires filing a supplemental ADS and amodest ($130) fee63

●●●Changing spelling of inventornames?If an inventor name needs spelling corrected, orneeds an update (for example an inventor doesa name change or changes a name due tomarriage) …This is much easier under new RulesJust hand in a supplemental ADS and pay the$130 fee and Bob's your uncle64●●●Opening sentence no longerrequiredLegacy practice is that any domestic benefitclaim must be set forth in the opening sentenceof the applicationFor an application filed on or after September16, 2012, this is no longer required.Under the new Rules, setting forth such a claimin the ADS is both necessary and sufficient65Trap for the unwary●●●●●The ADS must be filed on or prior to the datethat any oath or declaration is filedSuppose oath is filed naming A, and only lateran ADS is filed and it names A and BUSPTO will take A as the inventorYou will then have to use Rule 48 to correct theinventorshipBest Practice is to avoid handing in any oath ordeclaration prior to the day that the ADS is filed66

New Rule-46 practice67●●●Rule 46 practiceA would-be non-inventor applicant that is not anassignee or an obligated assignee may stillbecome the applicant by filing a petition undernew Rule 46This will get published in the OGRequired:●●proof of pertinent factsa showing that such action is required to preservethe rights of the parties● a petition under new Rule 4668● the petition feeRule 46 practice● How much of a showing do you need?● See MPEP 409.03(f)A proprietary interest obtained other than by assignment or agreement toassign may be demonstrated by an appropriate legal memorandum tothe effect that a court of competent jurisdiction (federal, state, or foreign)would by the weight of authority in that jurisdiction award title of theinvention to the 37 CFR 1.47(b) applicant. The facts in support of anyconclusion that a court would award title to the 37 CFR 1.47(b) applicantshould be made of record by way of an affidavit or declaration of theperson having firsthand knowledge of same. The legal memorandumshould be prepared and signed by an attorney at law familiar with the lawof the jurisdiction involved. A copy (in the English language) of a statute(if other than the United States statute) or a court decision (if other than areported decision of a federal court or a decision reported in the UnitedStates Patents Quarterly) relied on to demonstrate a proprietary interestshould be made of record.69

Filing of international (PCT) patentapplications70PCT request●●For a PCT application filed on or afterSeptember 16, 2012, the filer can trim back theapplicant list so that only the assignee is anapplicantThis simplifies the Request compared withlegacy practice where so-and-so is an applicantonly for purposes of the US, and X company isan applicant for all states other than the US71Consequences of AIA for PCT filers●●●Keep in mind that it is your applicant list thatdetermines whether the Treaty can be used atallKeep in mind that it is your applicant list thatdetermines which Receiving Office iscompetentIf you cut back your inventor list to include onlythe assignee applicant, then this might affectwhether you can use the Treaty at all, andmight affect which ROs are available to you72

Consequences of AIA for PCT filers●●A reduced list of ROs available to you may inturn reduce the range of ISAs available to youYou may sometimes find it helpful to retaininventor-applicants in the Request so as to:●●●Make the Treaty available when otherwise it wouldnot be availableMake some RO available when it otherwise wouldnot be availableMake some ISA available when it otherwise wouldnot be available73Declarations under PCT Rule 4.17●●●Your materials include the Legacy declarationunder PCT Rule 4.17WIPO has not yet published a “new language”declaration under PCT Rule 4.17 (for use withPCT applications filed on and after September16, 2012), but will do so soonForeign PCT filers should be encouraged tomake use of the “new language” declarationunder PCT Rule 4.17 going forward (for IAsfiled on or after September 16, 2012)74Entry into the US national phase froman international (PCT) patent application75

●●When entering US national phasefrom a PCT application ...A required step is to check carefully theinternational filing dateIf the IFD is prior to September 16, 2012, thenthe “old language” declaration should be used● If the IFD is on or after September 16, 2012,then the “new language” declaration should beused●This may require discarding or disregarding asigned declaration that is already in the file, if itis the wrong kind76If you are entrusted the US nationalphase entry from a PCT filed by foreigncounsel ...●●●The Best Practice is to do an e-handshake withforeign counsel and to obtain ePCT accessThis will permit you to copy and paste thedetailed bibliographic data from ePCT into theADSAvoiding hand-keying the ADS eliminates somecategories of errors and mistakes77If you are entrusted the US nationalphase entry from a PCT filed by foreigncounsel ...●●●Check ePCT or Patentscope to see ifDeclarations under PCT Rule 4.17 are alreadyin the fileIf so, check to make sure they are of the correcttype (“old language” or “new language”)If they are of the correct type, then use them inthe US national-phase entry instead ofspending time and money getting signatures onForms PTO/SB/01A or PTO/AIA/0178

If you are entrusted the US nationalphase entry from a PCT filed by foreigncounsel ...●●If there are no Declarations under PCT Rule4.17 already in the file, or if they are of thewrong type ...Then you must obtain signatures on FormsPTO/SB/01A or PTO/AIA/01 (depending onwhether the IFD is before or on or afterSeptember 16, 2012)79If you are entrusted the US nationalphase entry from a PCT filed by foreigncounsel ...●●Keep in mind that if you run into troubleobtaining signatures on Forms PTO/SB/01A,then you will have to use Rule 47 practiceIf you run into trouble obtaining signatures onforms PTO/AIA/01, then you can use SubstituteStatement practice (form PTO/AIA/02)80Entry into US national phase●●In the case of an entry into the US nationalphase from a PCT application, you get one freechance to change the inventor list (changedfrom what the inventor list was in theinternational phase) without penalty, namely byfiling an ADS with “the initial submission underSection 371”Otherwise the inventors are presumed to be theinventors in the Request, includingmodifications if any under PCT Rule 92bis81

Handing in inventors' Declarations ina 371 case as early as possible ...●●●There are two ways to do this:Get Forms PTO/SB/01A or PTO/AIA/01 (as thecase may be) signed and e-file them in EFS-Web as soon as possible after filing of theinternational application, orMake use of the Declarations under PCT Rule4.17 (old or new as the case may be) andinclude them with the PCT application as filedThere is absolutely no good reason to postponethis until the 30 months draws near82●●●Consequences of foot-dragging onDeclarations for 371 casesKeep in mind that for a 371 case, one categoryof patent term adjustment is tied to the date onwhich you handed in the inventors' DeclarationsFoot-dragging on handing in inventors'Declarations in a 371 case can lead to loss ofpatent term adjustmentThe Best Practice in a 371 case is to hand inthe inventors' Declarations as early as possible83PTA consequences of the new rules●●As already discussed, foot-dragging with theinventor declaration in a 371 case can losesome or all of the possible PTAFor any case (371 or not), if you drag your feetso long that you receive a Notice of Allowabilityinstead of a Notice of Allowance … then thetime that passes before you hand in theinventor declaration may also get deductedfrom PTA84

●●●Choosing between a “bypass” continuationor entering the US national phase?There are many factors that might influence thischoice – the standard for restriction that will beapplied, for exampleHere is one more factor. Suppose you have anIA (international application) filed beforeSeptember 16, 2012 and suppose you have amissing or uncooperative inventor?Then you might pick “bypass” so as to avoidhaving to satisfy Rule 47 practice85●●Choosing between a “bypass” continuationor entering the US national phase?Here is a second factor. Suppose you have anIA (international application) filed beforeSeptember 16, 2012 and suppose you have anon-inventor client that wishes to be theapplicant?Then you might pick “bypass” so as to permitthe non-inventor client to become the applicant86In the case of conflicting indicationsas to 111(a) and 371 ...●●Under the old rules, it would be presumed thatthe application is to be a 111(a) applicationUnder the new rules, it will be presumed thatthe application is to be a 371 application87

Random changes by USPTO88Ink signature required on Form 2038● Virgule signature (“s-signature” per 37 CFR §1.4) may no longer be employed on Form 2038when faxed or paper-filed89USPTO will still use inventor name, notassignee applicant name, to identifyapplications and patents●●This affects the caption in a letter or responseto Office ActionThis affects Information Disclosure Statements90

●●●Getting your name and address offthe file after the patent issuesThe new rules give a “representative capacity”practitioner the power to change thecorrespondence address in a granted patentThe practitioner must aver that notice has beengiven to the patentee or ownerThis solves a problem which in the past made itnearly impossible for a “representative capacity”practitioner to get off the file91Rule 496 procedure narrowed●●●Old 37 CFR § 1.496 (last sentence) permittedsome latitude to amend claims after nationalphaseentryThese are the cases where a “zero” search feeand exam fee are paid because ISA/US orIPEA/US found the presented claims to bepatentableNew rule 496 only permits amending suchclaims after national-phase entry “to eliminateobjections as to form or to cancel rejectedclaims”92Carryover of POA from parent case?●●If no inventors have been added, then whenyou file a continuation or divisional, you mayreuse the Power of Attorney from the parentcaseYou must file a copy of the POA in the childcase93

●●3.73 statement may be signed bythe attorney?USPTO was formerly of two minds as towhether the attorney could sign a 3.73statement (37 CFR § 3.73)The August 14, 2012 FR notice expressly saysthat this is okay94Exercises95Exercises relating to September 16,2012 (the big day)●International application filed before the big day,national phase entered after the big day. Oldlanguage dec or new language dec?96

Exercises relating to September 16,2012 (the big day)●Domestic (111a) application filed before the bigday with no dec, notice of missing parts for thedec received after the big day. Old languagedec or new language dec?97Exercises relating to September 16,2012 (the big day)●Domestic application filed after the big day, witheffective filing date (35 USC § 120) before thebig day. Old language dec or new languagedec?98Exercises relating to September 16,2012 (the big day)●Bypass continuation filed after the big day, froma PCT application that was filed before the bigday. Old language dec or new language dec?99

Exercises relating to September 16,2012 (the big day)●Continuation or divisional filed after the big day,from a parent application that was filed beforethe big day. Can we reuse the dec from theparent application?100Exercises relating to September 16,2012 (the big day)●International application filed before the big day,foreign counsel planned ahead and obtained aPCT Rule 4.17 declaration, national phaseentered after the big day. Can we use the 4.17declaration?101Action item●●●●If you have not already done so, you should jointhe EFS-Web-L listserv (email discussiongroup)The group discusses e-filing at the USPTO andother issues that arise in daily patent practice inthe USYou can always unsubscribe later if you wishSee http://www.oppedahl.com/listserves102

Important AIA webinar September 6●Hear directly from two USPTO people about theeffects of the America Invents ActFree of charge! For more information seehttp://www.oppedahl.com/cle/aia/103Please be sure to completethe evaluation questionnaire104Thank you!105

Exercises relating to September 16,2012 (the big day)●●International application filed before the big day,national phase entered after the big day. Oldlanguage dec or new language dec?Answer: Old language dec. For example FormPTO/SB/01A106Exercises relating to September 16,2012 (the big day)●●Domestic (111a) application filed before the bigday with no dec, notice of missing parts for thedec received after the big day. Old languagedec or new language dec?Answer: old language dec. For example FormPTO/SB/01A107Exercises relating to September 16,2012 (the big day)●●Domestic application filed after the big day, witheffective filing date (35 USC § 120) before thebig day. Old language dec or new languagedec?Answer: new language dec. For exampleForm PTO/AIA/01108

Exercises relating to September 16,2012 (the big day)●●Bypass continuation filed after the big day, froma PCT application that was filed before the bigday. Old language dec or new language dec?Answer: New language dec, for example FormPTO/AIA/01109Exercises relating to September 16,2012 (the big day)●●Continuation or divisional filed after the big day,from a parent application that was filed beforethe big day. Can we reuse the dec from theparent application?Answer: No. We will be forced to round up allnew signatures on a new language dec, forexample Form PTO/AIA/01110Exercises relating to September 16,2012 (the big day)●●International application filed before the big day,foreign counsel planned ahead and obtained aPCT Rule 4.17 declaration, national phaseentered after the big day. Can we use the 4.17declaration?Answer: yes.111

Vol. 77Tuesday,No. 157 August 14, 2012Part VIDepartment of CommercePatent and Trademark Office37 CFR Parts 1, 3, 5, et al.Changes To Implement the Inventor’s Oath or Declaration Provisions ofthe Leahy-Smith America Invents Act; Final Rulesroberts on DSK5SPTVN1PROD with RULESVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00001 Fmt 4717 Sfmt 4717 E:\FR\FM\14AUR6.SGM 14AUR6

48776 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESDEPARTMENT OF COMMERCEPatent and Trademark Office37 CFR Parts 1, 3, 5, 10, and 41[Docket No.: PTO–P–2011–0074]RIN 0651–AC68Changes To Implement the Inventor’sOath or Declaration Provisions of theLeahy-Smith America Invents ActAGENCY: United States Patent andTrademark Office, Commerce.ACTION: Final rule.SUMMARY: The United States Patent andTrademark Office (Office) is revising therules of practice to implement theinventor’s oath or declaration provisionsof the Leahy-Smith America Invents Act(AIA). The AIA permits a person towhom the inventor has assigned, or isunder an obligation to assign, theinvention, or who otherwise showssufficient proprietary interest in thematter, to make the application forpatent. The AIA also streamlines therequirements for the inventor’s oath ordeclaration, and permits a substitutestatement in lieu of an oath ordeclaration in certain circumstances.The Office is revising the rules ofpractice relating to the inventor’s oathor declaration, including reissue oathsor declarations, and substitutestatements signed by a person otherthan an inventor, and to provide forassignments containing oath ordeclaration statements. Additionally,the Office is revising the rules ofpractice relating to the inventor’s oathor declaration to allow applicants topostpone filing the inventor’s oath ordeclaration until the application isotherwise in condition for allowance.Finally, to better facilitate processing ofpatent applications, the Office isrevising and clarifying the rules ofpractice for power of attorney andprosecution of an application by anassignee.DATES: Effective Date: The changes inthis final rule take effect on September16, 2012.Applicability Date: The changes to 37CFR 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 37CFR 1.47 and 1.432, apply only topatent applications filed under 35U.S.C. 111(a) or 363 on or afterSeptember 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 ofPatent Legal Administration, directly bytelephone, or by mail addressed to: MailStop Comments-Patents, Commissionerfor Patents, P.O. Box 1450, Alexandria,VA 22313–1450, marked to the attentionof the Hiram H. Bernstein.SUPPLEMENTARY INFORMATION:Executive Summary: Purpose: Section4 of the AIA amends the patent laws tochange the practice regarding theinventor’s oath or declaration and filingof an application by a person other thanthe inventor. Section 20 of the AIAamends the patent laws to remove the‘‘without any deceptive intention’’provisions. This final rule revises therules of practice to implement theseprovisions of sections 4 and 20 of theAIA. The changes in sections 4 and 20of the AIA take effect on September 16,2012, and apply to patent applicationsfiled, or proceedings commenced, on orafter September 16, 2012.Summary of Major Provisions: TheOffice is revising the rules of practice topermit a person to whom the inventorhas assigned or is under an obligation toassign an invention to file and prosecutean application for patent as theapplicant, and to permit a person whootherwise shows sufficient proprietaryinterest in the matter to file andprosecute an application for patent asthe applicant on behalf of the inventor.Formerly, a person to whom theinventor had assigned an inventioncould file and prosecute an applicationfor patent, but the inventor wasconsidered the applicant. The Office isalso revising the rules of practice torequire that juristic entities take actionin a patent application via a registeredpractitioner.The Office is revising the rules ofpractice to eliminate a number of formerrequirements pertaining to theinventor’s oath or declaration andcorrection of inventorship. The Office isrevising the rules of practice to permitapplicants to postpone filing theinventor’s oath or declaration until theapplication is otherwise in condition forallowance. The Office is revising therules of practice to provide for the filingof a substitute statement in lieu of anoath or declaration by an inventor if theinventor is deceased, under legalincapacity, or cannot be found orreached after diligent effort, or is underan obligation to assign the invention buthas refused to execute an oath ordeclaration.VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00002 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6The Office is also revising the rules ofpractice to remove the provisions whichset forth ‘‘without any deceptiveintention’’ requirements. The Office isfurther revising the rules pertaining toreissue practice to eliminate therequirement for a supplemental reissueoath or declaration, and to require thatthe inventor’s oath or declarationidentify a claim that the applicationseeks to broaden if the reissueapplication seeks to enlarge the scope ofthe claims of the patent.The Office is also revising the rules ofpractice to harmonize the practiceregarding foreign priority claims withthe practice regarding domestic benefitclaims by requiring that both foreignpriority claims and domestic benefitclaims be set forth in an applicationdata sheet.Costs and Benefits: This rulemaking isnot economically significant as thatterm is defined in Executive Order12866 (Sept. 30, 1993).Background: The AIA was enactedinto law on September 16, 2011. SeePub. L. 112–29, 125 Stat. 284 (2011).Section 4 of the AIA amends 35 U.S.C.115 and 118 to change the practiceregarding the inventor’s oath ordeclaration and filing of an applicationby a person other than the inventor. See125 Stat. at 293–94. Section 20 of theAIA amends 35 U.S.C. 116, 184, 251,and 256 (and other sections) to removethe provisions which set forth a‘‘without any deceptive intention’’requirement. See 125 Stat. at 333–34.This final rule revises the rules ofpractice to implement the provisions ofsection 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 ofthe AIA.Section 4(a) of the AIA amends 35U.S.C. 115 to change the requirementsfor the inventor’s oath or declaration asfollows.Amended 35 U.S.C. 115(a) providesthat an application filed under 35 U.S.C.111(a) or that commences the nationalstage under 35 U.S.C. 371 must include,or be amended to include, the name ofthe inventor for any invention claimedin the application. 125 Stat. at 293. 35U.S.C. 115(a) also provides that, exceptas otherwise provided in 35 U.S.C. 115,each individual who is the inventor ora joint inventor of a claimed inventionin an application must execute an oathor declaration in connection with theapplication. 125 Stat. at 293–94.Amended 35 U.S.C. 115(b) providesthat an oath or declaration under 35U.S.C. 115(a) must contain statementsthat the application was made or wasauthorized to be made by the affiant or

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48777sroberts on DSK5SPTVN1PROD with RULESdeclarant, and the individual believeshimself or herself to be the originalinventor or an original joint inventor ofa claimed invention in the application.125 Stat. at 294. There is no longer arequirement in the statute that theinventor must state his country ofcitizenship or that the inventor believeshimself or herself to be the ‘‘first’’inventor of the subject matter (process,machine, manufacture, or compositionof matter) sought to be patented.Amended 35 U.S.C. 115(c) providesthat the Director may specify additionalinformation relating to the inventor andto the invention that is required to beincluded in an oath or declaration under35 U.S.C. 115(a). Id.Amended 35 U.S.C. 115(d)(1)provides that, in lieu of execution of anoath or declaration by an inventor under35 U.S.C. 115(a), the applicant forpatent may provide a substitutestatement under the circumstancesdescribed in 35 U.S.C. 115(d)(2), andsuch additional circumstances as theDirector specifies by regulation. Id. 35U.S.C. 115(d)(2) provides that anapplicant may provide a substitutestatement where an inventor is unableto file the oath or declaration under 35U.S.C. 115(a) because the individual isdeceased, under legal incapacity, orcannot be found or reached afterdiligent effort, or an individual is underan obligation to assign the invention buthas refused to make the oath ordeclaration required under 35 U.S.C.115(a). Id. Therefore, while an assignee,a person under an obligation to assignthe invention (an ‘‘obligated assignee’’),or a person who otherwise showssufficient proprietary interest in thematter may make an application forpatent as provided for in 35 U.S.C. 118,an oath or declaration (or an assignmentcontaining the required statements) byeach inventor is still required, except inthe circumstances set forth in 35 U.S.C.115(d)(2) and in any additionalcircumstances specified by the Directorin the regulations. The contents of asubstitute statement are set forth in 35U.S.C. 115(d)(3). Specifically, 35 U.S.C.115(d)(3) provides that the substitutestatement must identify the individualwith respect to whom the statementapplies, set forth the circumstances forthe permitted basis for filing thesubstitute statement in lieu of the oathor declaration under 35 U.S.C. 115(a),and contain any additional information,including any showing, required by theDirector. Id.Amended 35 U.S.C. 115(e) providesfor making the statements requiredunder 35 U.S.C. 115(b) and (c) in anassignment of record and specificallypermits an individual who is under anobligation of assignment of anapplication to include the requiredstatements in the assignment executedby the individual, in lieu of filing thestatements separately. Id.Amended 35 U.S.C. 115(f) providesthat a notice of allowance under 35U.S.C. 151 may be provided to anapplicant only if the applicant has filedeach required oath or declaration under35 U.S.C. 115(a), substitute statementunder 35 U.S.C. 115(d), or recordedassignment meeting the requirements of35 U.S.C. 115(e). Id.The changes to 35 U.S.C. 115 in theAIA do not affect 35 U.S.C. 111(a)(2),which continues to require that anapplication filed under 35 U.S.C. 111(a)include an oath or declaration asprescribed by 35 U.S.C. 115, and 35U.S.C. 111(a)(3), which continues topermit the oath or declaration to besubmitted after the filing date of theapplication, but within such period andunder the conditions prescribed by theDirector, including payment of thecurrently charged surcharge. See 35U.S.C. 111(a)(2)(C) and (a)(3), and 37CFR 1.16(f). Likewise, 35 U.S.C. 371(c)continues to require an oath ordeclaration complying with therequirements of 35 U.S.C. 115 for aninternational application to enter thenational stage, and 35 U.S.C. 371(d)continues to require the oath ordeclaration to be submitted within theperiod prescribed by the Director, andwith the payment of any surchargerequired by the Director, if notsubmitted by the date of thecommencement of the national stage.See 35 U.S.C. 371(c)(4) and (d).Amended 35 U.S.C. 115(g)(1) providesthat the requirements under 35 U.S.C.115 shall not apply to an individualnamed as the inventor or a jointinventor in an application that claimsbenefit under 35 U.S.C. 120, 121, or365(c) of an earlier-filed application, if:(1) An oath or declaration meeting therequirements of 35 U.S.C. 115(a) wasexecuted by the individual and wasfiled in connection with the earlier-filedapplication; (2) a substitute statementmeeting the requirements of 35 U.S.C.115(d) was filed in connection with theearlier-filed application with respect tothe individual; or (3) an assignmentmeeting the requirements of 35 U.S.C.115(e) was executed with respect to theearlier-filed application by theindividual and was recorded inconnection with the earlier-filedapplication. 125 Stat. at 294–95. 35U.S.C. 115(g)(2) provides that theDirector may still require a copy of theexecuted oath or declaration, thesubstitute statement, or the assignmentfiled in connection with the earlier-filedVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00003 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6application to be filed in the later-filedapplication. Id.Amended 35 U.S.C. 115(h)(1)provides that any person making astatement under 35 U.S.C. 115 maywithdraw, replace, or otherwise correctthe statement at any time. 35 U.S.C.115(h)(1) also provides that the Directorshall establish regulations under whichadditional statements may be filed whena change is made in the naming of theinventor requiring the filing of one ormore additional statements under 35U.S.C. 115. Id. 35 U.S.C. 115(h)(2)provides that if an individual hasexecuted an oath or declaration meetingthe requirements of 35 U.S.C. 115(a) oran assignment meeting the requirementsof 35 U.S.C. 115(e), then the Directormay not require that individual tosubsequently make any additional oath,declaration, or other equivalentstatement in connection with theapplication or any patent issuingthereon. Id. 35 U.S.C. 115(h)(3) providesthat a patent shall not be invalid orunenforceable based upon the failure tocomply with a requirement under thissection if the failure is remedied asprovided under 35 U.S.C. 115(h)(1). Id.Amended 35 U.S.C. 115(i) providesthat any declaration or statement filedpursuant to 35 U.S.C. 115 must containan acknowledgement that any willfulfalse statement made in the declarationor statement is punishable under 18U.S.C. 1001 by fine or imprisonment ofnot more than 5 years, or both. Id. Thisis similar to the requirements in preexisting35 U.S.C. 25 for the use of adeclaration in lieu of an oath in anOffice proceeding. See 35 U.S.C. 25(b)(‘‘Whenever such written declaration isused, the document must warn thedeclarant that willful false statementsand the like are punishable by fine orimprisonment, or both (18 U.S.C.1001).’’).Section 4(a)(2) of the AIA amends 35U.S.C. 121 to eliminate the sentence thatprovided for the Director to dispensewith signing and execution by theinventor in a divisional applicationwhen the divisional application isdirected solely to subject matterdescribed and claimed in the originalapplication as filed. Id. This amendmentto 35 U.S.C. 121 is consistent with 35U.S.C. 115(g)(1) because the inventornamed in a divisional applicationwould not need to execute an oath ordeclaration or equivalent statement forthe divisional application regardless ofwhether the divisional application isdirected solely to subject matterdescribed and claimed in the originalapplication.

sroberts on DSK5SPTVN1PROD with RULES48778 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and RegulationsSection 4(a)(3) of the AIA amends 35U.S.C. 111(a) to insert ‘‘or declaration’’after ‘‘oath.’’ Id.Section 4(b)(1) of the AIA amends 35U.S.C. 118 to change the practiceregarding the filing of an application bya person other than the inventor. First,35 U.S.C. 118 is amended to providethat a person to whom the inventor hasassigned, or is under an obligation toassign, the invention may make anapplication for patent. 125 Stat. at 296.Second, 35 U.S.C. 118 is amended toprovide that a person who otherwiseshows sufficient proprietary interest inthe matter may make an application forpatent on behalf of and as agent for theinventor on proof of the pertinent factsand a showing that such action isappropriate to preserve the rights of theparties. Id. Under amended 35 U.S.C.118, the Director may continue toprovide whatever notice to the inventorthat the Director considers to besufficient. Id. 35 U.S.C. 118 is alsoamended to provide that if a patent isgranted on an application filed under 35U.S.C. 118, the patent shall be grantedto the real party in interest. Id.Amended 35 U.S.C. 116 (35 U.S.C.116(b)) continues to provide that if ajoint inventor refuses to join in anapplication for patent or cannot befound or reached after diligent effort,the application may be made by theother inventor on behalf of himself andthe omitted inventor. See 35 U.S.C.116(b). Likewise, 35 U.S.C. 117continues to provide that legalrepresentatives of deceased inventorsand of those under legal incapacity maymake application for patent uponcompliance with the requirements andon the same terms and conditionsapplicable to the inventor. See 35 U.S.C.117.Section 4(b)(2) of the AIA amends 35U.S.C. 251 to provide for the filing of areissue application by an assignee of theentire interest if the application for theoriginal patent was filed by the assigneeof the entire interest. Id.Section 4(c) of the AIA amends 35U.S.C. 112 to change, inter alia, theundesignated paragraphs to subsections.Id. Section 4(d) makes conformingamendments to 35 U.S.C. 111(b) to makereference to the subsections of 35 U.S.C.112. 125 Stat. at 296–97.Section 4(e) of the AIA provides thatthe amendments made by Section 4shall take effect on, and shall apply toany patent application filed on or after,September 16, 2012. 125 Stat. at 297.Section 20 of the AIA amends 35U.S.C. 116, 184, 251, and 256 toeliminate ‘‘without any deceptiveintention’’ clauses from each portion ofthe statute. 125 Stat. at 333–34. Section20 of the AIA provides that itsamendments shall take effect on, andshall apply to proceedings commencedon or after September 16, 2012. 125 Stat.at 335. This change should not be takenas an endorsement for applicants andinventors to act with ‘‘deceptiveintention’’ in proceedings before theOffice. As discussed previously, 35U.S.C. 115(i) requires that anydeclaration or statement filed pursuantto 35 U.S.C. 115 must contain anacknowledgement that any willful falsestatement made in the declaration orstatement is punishable under 18 U.S.C.1001 by fine or imprisonment of notmore than five (5) years, or both.General Discussion RegardingImplementation: The Office proposedchanges and requested comments on thechanges to the rules of practice toimplement section 4 of the AIA in anotice of proposed rulemakingpublished in January 2012. See Changesto Implement the Inventor’s Oath orDeclaration Provisions of the Leahy-Smith America Invents Act, 77 FR 982–1003 (Jan. 6, 2012) (notice of proposedrulemaking). The public submitted anumber of comments suggesting that theOffice take a more robust approach toimplementing the changes in section 4of the AIA, rather than shoehorn thoseprovisions into existing Office practices.In this final rule, the Office is makinga number of changes to theimplementation of section 4 of the AIAin view of the input from the public.Changes Concerning Who May Applyfor a Patent (the Applicant): The Officetook the position in the notice ofproposed rulemaking that the change to35 U.S.C. 118 did not permit theassignee to be the applicant except inthe situations enumerated in 35 U.S.C.115(d)(2). See Changes to Implement theInventor’s Oath or DeclarationProvisions of the Leahy-Smith AmericaInvents Act, 77 FR at 983. The publicsubmitted a number of commentssuggesting that the changes to 35 U.S.C.118 permit an assignee or an obligatedassignee to be the applicant even insituations other than those enumeratedin 35 U.S.C. 115(d)(2). The Office hasrevised the position taken in the noticeof proposed rulemaking based on thepublic comments, and is now taking theposition that the changes to 35 U.S.C.115 and 118 permit an assignee to filean application for patent as theapplicant.35 U.S.C. 118, as amended by theAIA, permits (but does not require) aperson to whom the inventor hasassigned (assignee) or is under anobligation to assign (obligated assignee)the invention to make the applicationfor patent. That section also permits aVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00004 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6person who otherwise shows sufficientproprietary interest in the matter tomake an application for patent on behalfof, and as agent for, the inventor. Thelegislative history of the AIA makesclear that the change to 35 U.S.C. 118is designed to: (1) Make it easier for anassignee to file a patent application; (2)allow obligated assignees (entities towhich the inventor is obligated to assignthe application) to file applications; and(3) allow a person who has a sufficientproprietary interest in the invention tofile an application to preserve thatperson’s rights and those of theinventor. See H.R. Rep. 112–98, at 44(2011). 35 U.S.C. 115, as amended bythe AIA, still requires each inventor toexecute an oath or declaration, except inthe limited circumstances specified in35 U.S.C. 115(d), even if the applicationhas been filed by the assignee or anobligated assignee.Traditionally, being the applicant (orthe person who may ‘‘make theapplication’’) under 35 U.S.C. chapter11 has been synonymous with being theperson who must execute the oath ordeclaration under 35 U.S.C. 115.However, 35 U.S.C. 115, as amended bythe AIA, separates the applicant fromthe person who must execute the oathor declaration under 35 U.S.C. 115.Therefore, the Office now reads 35U.S.C. 116, 117, and 118 in view of thepublic comment to specify thecircumstances under which a personother than the inventor may be theapplicant, but 35 U.S.C. 115 defineswho must execute the oath ordeclaration that is required by 35 U.S.C.115.As the AIA distinguishes between the‘‘applicant’’ and the person who mustexecute the oath or declaration under 35U.S.C. 115, the Office is separating theregulations pertaining to being theapplicant from the regulationspertaining to execution of the inventor’soath or declaration. Specifically, theregulations pertaining to being theapplicant are as follows: (1) 37 CFR 1.41pertains to inventorship; (2) 37 CFR 1.42pertains to the applicant for patent(which may be the inventor or may bethe assignee); (3) 37 CFR 1.43 pertainsto applications by the legalrepresentative of a deceased or legallyincapacitated inventor; (4) 37 CFR 1.45pertains to joint inventors andapplications by remaining jointinventors; and (5) 37 CFR 1.46 pertainsto applications by the assignee,obligated assignee, or person whootherwise shows sufficient proprietaryinterest in the matter, or to applicationsin which the assignee has taken overprosecution to the exclusion of theinventor. The regulations pertaining to

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48779sroberts on DSK5SPTVN1PROD with RULESthe inventor’s oath or declaration are asfollows: (1) 37 CFR 1.63 pertains to aninventor’s oath or declaration under 35U.S.C. 115(a) or an assignment under 35U.S.C. 115(e) that contains thestatements required in an inventor’soath or declaration by the inventor or ajoint inventor; and (2) 37 CFR 1.64pertains to a substitute statement under35 U.S.C. 115(d) if the inventor isdeceased, is legally incapacitated,cannot be found or reached after adiligent effort was made, or has refusedto execute the oath or declaration.To further clarify the rules, andbecause of the statutory change from aninventor-applicant system to anassignee-applicant system, the Officeexplains the terms ‘‘applicant’’ and‘‘assignee’’ as now used in the rules ofpractice. The term ‘‘applicant’’ meansthe inventor (all joint inventorscollectively) if there is no assignee, or ifthe assignee has opted not to file (make)the application for patent and not totake over prosecution to the exclusion ofthe inventor. The term ‘‘applicant’’means the assignee (or obligatedassignee or person who otherwise showssufficient proprietary interest in thematter) if the assignee (or obligatedassignee or person who otherwise showssufficient proprietary interest in thematter) has filed the application forpatent, or if the assignee has taken overprosecution of the application to theexclusion of the inventor. The term‘‘assignee’’ means the assignee of theentire right, title and interest in theapplication regardless of whether theassignee filed the application for patentor has taken over prosecution of theapplication to the exclusion of theinventor.Under 35 U.S.C. 118, as amended,provides that where the Director grantsa patent on an application filed under35 U.S.C. 118 by a person other than theinventor, the Office must grant thepatent to the real party in interest.Therefore, the Office is requiringapplicants other than the inventor tonotify the Office of any change in thereal party in interest in a reply to anotice of allowance. Absent any suchnotification, the Office will presume nochange has occurred and will grant thepatent to the real party in interest ofrecord.The Office plans to continue to usethe inventor’s name for application andpatent identification purposes asinventor names tend to provide a moredistinct identification than assigneenames.Changes to Oath or DeclarationPractice: The Office proposed in thenotice of proposed rulemaking torequire that an oath or declarationinclude the names of all inventors, aswell as the ‘‘reviewed and understands’’and ‘‘duty to disclose’’ clauses formerlyrequired by 37 CFR 1.63(b)(2) and (b)(3).See Changes to Implement theInventor’s Oath or DeclarationProvisions of the Leahy-Smith AmericaInvents Act, 77 FR at 1000. The publicsubmitted a number of commentssuggesting that the Office should notrequire that an oath or declaration nameall of the inventors or require anystatements other than those required by35 U.S.C. 115(b).The Office is, in this final rule,streamlining a number of oath ordeclaration requirements (vis-a-vis boththe proposed and former requirements)based upon the public comments. First,the Office is revising 37 CFR 1.63 tostate that an inventor’s oath ordeclaration need not indicate the nameof each inventor if the applicantprovides an application data sheetindicating the legal name, residence,and mailing address of each inventor.Second, the Office is revising 37 CFR1.63 to eliminate the requirement thatan inventor’s oath or declaration statethat the person executing the oath ordeclaration has reviewed andunderstands the contents of theapplication, and acknowledges the dutyto disclose to the Office all informationknown to the person to be material topatentability as defined in 37 CFR 1.56.37 CFR 1.63 will simply state that aperson may not execute an oath ordeclaration for an application unlessthat person has reviewed andunderstands the contents of theapplication, and is aware of the duty todisclose to the Office all informationknown to the person to be material topatentability as defined in 37 CFR 1.56.Third, the Office is revising 37 CFR 1.63to eliminate the requirements that anydeclaration under 35 U.S.C. 115 containan acknowledgement that willful falsestatements may jeopardize the validityof the application or any patent issuingthereon, and that all statements made ofthe declarant’s own knowledge are trueand that all statements made oninformation and belief are believed to betrue. Finally, since 35 U.S.C. 115 nolonger contains a requirement that theinventor identify his country ofcitizenship, the Office will no longerrequire this information in the oath ordeclaration.As revised by the AIA, 35 U.S.C. 115(entitled ‘‘Inventor’s oath ordeclaration’’) provides for an oath ordeclaration (35 U.S.C. 115(a)), substitutestatement (35 U.S.C. 115(d)), and anassignment-statement (35 U.S.C. 115(e)),and any substitute statement orassignment-statement must contain aVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00005 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6willful false statements clause pursuantto 35 U.S.C. 115(i). The requirement forthe willful false statements clause hasthe effect of making a substitutestatement under 35 U.S.C. 115(d) or anassignment-statement under 35 U.S.C.115(e) properly denominated as a‘‘declaration.’’ See previous discussionof 35 U.S.C. 115(i). Consistent withthese statutory provisions, and theprovisions of 35 U.S.C. 111(a) and371(c) which require that an applicationcontain an ‘‘oath or declaration’’ asprescribed by 35 U.S.C. 115 (see 35U.S.C. 111(a)(2)(C) and 371(c)(4)), theOffice is employing the phrase‘‘inventor’s oath or declaration’’ in therules of practice to mean an oath ordeclaration as provided for in 35 U.S.C.115(a), a substitute statement asprovided for in 35 U.S.C. 115(d), or anassignment-statement as provided for in35 U.S.C. 115(e).Specifically, when the rules reference‘‘an inventor’s oath or declaration,’’ itmeans an oath or declaration under 35U.S.C. 115(a), substitute statementunder 35 U.S.C. 115(d), or assignmentstatementunder 35 U.S.C. 115(e)executed by or with respect to anindividual (whether the inventor or ajoint inventor) for an application. Thephrase ‘‘the inventor’s oath ordeclaration’’ means the oaths ordeclarations under 35 U.S.C. 115(a),substitute statements under 35 U.S.C.115(d), or assignment-statements under35 U.S.C. 115(e) executed by theinventive entity. With respect to anapplication naming more than oneinventor, any reference to ‘‘theinventor’s oath or declaration’’ meansthe oaths, declarations, or substitutestatements that have been collectivelyexecuted by or with respect to all of thejoint inventors, unless otherwise clearfrom the context.The Office proposed in the notice ofproposed rulemaking to continue thepractice of requiring the inventor’s oathor declaration before examination. SeeChanges to Implement the Inventor’sOath or Declaration Provisions of theLeahy-Smith America Invents Act, 77FR at 984–85. The public submitted anumber of comments suggesting that theOffice should not require the inventor’soath or declaration before an applicationis in condition for allowance. Basedupon the public comments, the Office isproviding in this final rule thatapplicants may postpone filing theinventor’s oath or declaration until theapplication is otherwise in condition forallowance if the applicant provides anapplication data sheet beforeexamination indicating the name,residence, and mailing address of eachinventor. The Office will continue the

sroberts on DSK5SPTVN1PROD with RULES48780 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationspractice permitted by 35 U.S.C.111(a)(3) of requiring a surcharge(currently $130) to recover the cost ofthe special processing and additionalnotices for original (non-reissue)applications that are not complete onfiling. If the applicant, however,provides a signed application data sheetproviding the name, residence, andmailing address of each inventor, theOffice will not require an additional feebeyond the surcharge simply topostpone filing the inventor’s oath ordeclaration until the application isotherwise in condition for allowance.The Office indicated in the notice ofproposed rulemaking that the Officeneeds to know who the inventors areprior to examination and thatpostponing the requirement for theinventor’s oath or declaration untilallowance would add to overall patentpendency. See Changes to Implementthe Inventor’s Oath or DeclarationProvisions of the Leahy-Smith AmericaInvents Act, 77 FR at 984. The Office isproposing in a separate rulemaking anadditional fee of $1,000 ($500 for asmall entity, and $250 for a microentity) for a request to correctinventorship in an application after thefirst Office action on the merits toencourage reasonable diligence and abona fide effort in ascertaining theactual inventorship and providing thatinformation to the Office prior toexamination. The Office is alsoconsidering proposing (in a separaterulemaking) changes to the patent termadjustments provisions of 37 CFR 1.704(defining the circumstances thatconstitute a failure of the applicant toengage in reasonable efforts to concludeprocessing or examination of anapplication, and which result in areduction of patent term adjustment) toensure that applicants who delay theissuance of a notice of allowance under35 U.S.C. 151 do not gain patent termadjustment as a consequence of theirdelay.Applicants entering the national stageunder 35 U.S.C. 371 from aninternational application under thePatent Cooperation Treaty (PCT) mustbe mindful of the patent termadjustment consequences of this courseof action. The Office is changing itsrules to provide that a PCT internationalapplication enters the national stagewhen the applicant files the fee requiredby 35 U.S.C. 371(c)(1) (the national feeprovided in 35 U.S.C. 41(a)), and thedocuments required by 35 U.S.C.371(c)(2) (a copy of the internationalapplication (unless not required under35 U.S.C. 371(a) or alreadycommunicated by the InternationalBureau), and a translation into theEnglish language of the internationalapplication, if it was filed in anotherlanguage)) within the period set in 37CFR 1.495. The fourteen-month timeframe in 35 U.S.C. 154(b)(1)(A)(i)(II) forissuing an Office action under 35 U.S.C.132 or notice of allowance under 35U.S.C. 151 is measured from ‘‘the dateon which an international applicationfulfilled the requirements of section371,’’ which includes the filing of theinventor’s oath or declaration. See 35U.S.C. 371(c)(4). This process isdiscussed in detail in the Manual ofPatent Examining Procedure (MPEP).See MPEP § 1893.03(b) (8th ed. 2001)(Rev. 8, July 2010).Changes Pertaining to SubstituteStatements: In the notice of proposedrulemaking, the Office proposed torequire a petition with showings and afee for applicants executing a substitutestatement in lieu of an oath ordeclaration as required by former 37CFR 1.47. See Changes to Implement theInventor’s Oath or DeclarationProvisions of the Leahy-Smith AmericaInvents Act, 77 FR at 988–89, and 999.The public submitted a number ofcomments suggesting that the Officeshould not require proof or showingsfrom applicants executing a substitutestatement in lieu of an oath ordeclaration. The Office is in this finalrule streamlining a number of proposedsubstitute statement requirements (vis-avisboth the proposed and formerrequirements of 37 CFR 1.47) basedupon the public comments. For anassignee or obligated assignee filing theapplication as the applicant, the finalrule provides that the documentaryevidence of ownership (e.g., assignmentfor an assignee, employment agreementfor an obligated assignee) should berecorded as provided for in 37 CFR part3 no later than the date the issue fee ispaid in the application. For a personwho otherwise shows sufficientproprietary interest in the matter to filethe application as the applicant, thefinal rule provides that the showing ofproprietary interest must be filed in theapplication, the fee set forth in 37 CFR1.17(g) paid, and a petition grantedbefore the person who has shownsufficient proprietary interest in thematter will be considered the applicant.The fee for persons who otherwise showsufficient proprietary interest in thematter is to recover the cost of thespecial processing and Official Gazettenotice required for applications that arefiled and prosecuted on behalf of thenonsigning inventor by a person who isnot the assignee or obligated assignee.The Office will also provide that anassignee, an obligated assignee, or aperson who otherwise shows sufficientVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00006 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6proprietary interest in the matter who isthe applicant may execute a substitutestatement in lieu of an oath ordeclaration if the applicant identifies:(1) The circumstances permitting theperson to execute the substitutestatement in lieu of an oath ordeclaration (e.g., whether thenonsigning inventor cannot be reachedafter a diligent effort was made, or hasrefused to execute the oath ordeclaration); (2) the person executingthe substitute statement with respect tothe nonsigning inventor and therelationship of such person to thenonsigning inventor; and (3) the lastknown address of the nonsigninginventor.Changes Pertaining to ReissuePractice: Consistent with theamendments made to 35 U.S.C. 115 and251, the Office is revising reissuepractice (vis-a-vis the formerrequirements) to: (1) Delete therequirement for a reissue inventor’s oathor declaration to include a statementthat all errors arose without anydeceptive intent on the part of theapplicant; (2) eliminate the requirementfor a supplemental inventor’s oath ordeclaration; (3) require the inventor’soath or declaration for a reissueapplication to identify a claim that theapplication seeks to broaden if thereissue application seeks to enlarge thescope of the claims of the patent (a basisfor the reissue is the patentee claimingless than the patentee had the right toclaim in the patent); and (4) clarify thata single claim containing both abroadening and a narrowing of theclaimed invention is to be treated as abroadening. These changes will providefor more efficient processing of reissueapplications and improve the quality ofpatents, in accordance with the intent ofthe AIA. In order to implement theconforming amendment made to 35U.S.C. 251 in section 4(b)(2) of the AIA,the Office is also revising the rules topermit an assignee of the entire interestwho filed an application under 35U.S.C. 118 that was patented to sign theinventor’s oath or declaration in areissue application of such patent (evenif the reissue application is a broadeningreissue).Miscellaneous Changes: The Office,under the authority provided by 35U.S.C. 2(b)(2), is also revising the rulesof practice for power of attorney,prosecution of an application by anassignee, and foreign priority anddomestic benefit claims to facilitateprosecution of applications and improvethe quality of patents. Juristic entities(organizations) who seek to prosecute anapplication, including taking overprosecution of an application, will need

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48781sroberts on DSK5SPTVN1PROD with RULESto do so via a registered practitioner.The Office’s experience is that the vastmajority of juristic entities act via aregistered practitioner, but a smallnumber attempt to prosecuteapplications ‘‘pro se.’’Other changes (vis-a-vis the formerregulations) include: (1) Streamliningcorrection of inventorship, correction ofan inventor’s name, and changes in theorder of the names of joint inventors; (2)providing for the carryover of a powerof attorney in continuing applications,where no inventors are being added inthe continuing application; (3)permitting practitioners who have actedonly in a representative capacity in anapplication to change thecorrespondence address after a patenthas issued; (4) accepting the signature ofa practitioner of record on a statementunder 37 CFR 3.73(c) on behalf of anassignee without requiring furtherevidence of the practitioner’s authorityto act on behalf of the assignee; (5)providing a procedure for handlingconflicts between different purportedassignees attempting to controlprosecution; and (6) harmonizing thepractice regarding foreign priorityclaims with the practice regardingdomestic benefit claims by requiringboth types of claims to be set forth inan application data sheet.Changes for consistency with section4(c) of the AIA (amending 35 U.S.C. 112to change, inter alia, the undesignatedparagraphs to subsections) will be madein a separate rulemaking thatimplements miscellaneous post patentprovisions of the AIA.Discussion of Specific RulesThe following is a discussion of theamendments to Title 37 of the Code ofFederal Regulations, parts 1, 3, 5, 10,and 41 that are implemented in thisfinal rule:37 CFR Part 1Section 1.1: Section 1.1(e) is amendedto update the mail stop designation forcommunications relating to patent termextensions under 35 U.S.C. 156 to makeit consistent with the Office’s list ofmail stops. Mail stops assist the Officein routing correspondence to the officeor area assigned with treating it. Use ofmail stops is not required but is stronglyrecommended, even where thedocuments are submitted via theOffice’s electronic filing system-Web(EFS-Web). A mail stop designation canhelp the Office more quickly identifythe type of document if the applicantdid not select the correct documentcode when uploading a documentthrough EFS-Web. For this reason, useof mail stops is encouraged.Applicants are reminded that initialrequests for patent term extension maynot be submitted via EFS-Web and mustbe filed in paper. These initial requestsare handled differently by Officepersonnel than other types of officialpatent correspondence. Therefore, theuse of a mail stop will help ensure thatinitial requests are properly recognizedand processed in a timely manner.Section 1.4: Section 1.4(e)(2) providesthat a payment by credit card that is notbeing made via the Office’s electronicfiling systems (e.g., EFS-Web, theElectronic Patent Assignment System(EPAS), or the Finance On-lineShopping Web page for patentmaintenance fees), may only besubmitted with an original handwrittensignature personally signed inpermanent dark ink or its equivalent bythat person. This change will avoidpossible controversies regarding use ofan S-signature (§ 1.4(d)(2)) instead of ahandwritten signature (§ 1.4(d)(1)) forcredit card payments, e.g., a request forrefund where there is a change ofpurpose by the applicant and therequest is based on use of an S-signaturerather than a handwritten signature. AnS-signature includes any signature madeby electrical or mechanical means, andany other mode of making or applyinga signature not covered by ahandwritten signature. See § 1.4(d)(2).Section 1.4(e)(1) contains the languageof former § 1.4(e).An original handwritten signature isrequired only when the credit cardpayment is being made in paper andthus the Office’s Card Payment Form,PTO–2038, or an equivalent, is beingused. A submission via the CentralFacsimile Number is considered a papersubmission and requires an originalhandwritten signature. Applicants arereminded that neither Form PTO–2038nor an equivalent should be filed viaEFS-Web.Section 1.5: Section 1.5(a) is amendedto indicate that letters directed to theOffice concerning applications forpatent should state the name of the firstlisted inventor, rather than the name ofthe applicant. As discussed previously,the Office plans to continue to use theinventor’s name for application andpatent identification purposes asinventor names tend to provide a moredistinct identification than assigneename.Section 1.9: Section 1.9(a) is amendedto indicate that the terms ‘‘nationalapplication’’ and ‘‘nonprovisionalapplication’’ as used in 37 CFR chapterI with respect to internationalapplications filed under the PCT refer toan international application filed underthe PCT in which the basic national feeVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00007 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6under 35 U.S.C. 41(a)(1)(F) has beenpaid. Section 1.9(b) is amended toindicate that the term ‘‘internationalapplication’’ as used in 37 CFR chapterI refers to an international applicationfor patent filed under the PCT prior toentering national processing at theDesignated Office stage. This change isbeing made to avoid the situation inwhich a PCT ‘‘internationalapplication’’ that is pending as to theU.S. is neither an internationalapplication (because national processingat the Designated Office stage hasbegun) nor a nonprovisional application(because the application has not yetentered the national stage under§ 1.491). The use of the terms ‘‘nationalapplication’’ and ‘‘nonprovisionalapplication’’ for such applications willidentify the stage at which theapplication currently resides.Section 1.12: Sections 1.12(b) and (c)are amended to indicate that a requestfor access to assignment records of anapplication maintained in confidenceunder 35 U.S.C. 122(a) must includewritten authority of an inventor, theapplicant, the assignee or an assignee ofan undivided part interest, or a patentpractitioner of record, unless by petitionhaving the requisite showing. Thischange is for consistency with thechange in practice concerning who isthe applicant for patent in § 1.42.Section 1.14: Section 1.14(c) isamended to indicate that a request toaccess an application maintained inconfidence under 35 U.S.C. 122(a) mustbe signed by: (1) The applicant; (2) apatent practitioner of record; (3) theassignee or an assignee of an undividedpart interest; (4) the inventor or a jointinventor; or (5) a registered attorney oragent named in the papersaccompanying the application papersfiled under § 1.53 or the national stagedocuments filed under § 1.495, if apower of attorney has not beenappointed under § 1.32. This change isfor consistency with the change inpractice concerning who is theapplicant for patent in § 1.42.Section 1.14(f) is amended to limitpublication of notice in the OfficialGazette of an application filed bysomeone other than the inventor to thefiling of an application on behalf of aninventor by a person who otherwiseshows sufficient propriety interest inthe matter.Section 1.16: Section 1.16(f) isamended to refer to ‘‘the inventor’s oathor declaration’’ rather than ‘‘oath ordeclaration.’’ This change to § 1.16(f), aswell as the use of ‘‘the inventor’s oathor declaration’’ in other rules, e.g.,§§ 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),

sroberts on DSK5SPTVN1PROD with RULES48782 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations1.154(a)(6), 1.162, and 1.163(b)(6),1.175, 1.492(h), and 1.495(c)(1)(ii), is forconsistency with the use of the phrase‘‘the inventor’s oath or declaration’’ todenote: (1) the oath or declaration under35 U.S.C. 115(a), substitute statementunder 35 U.S.C. 115(d), or assignmentstatementunder 35 U.S.C. 115(e)executed by or with respect to theinventor for an application naming onlyone inventor; and (2) the oaths ordeclarations under 35 U.S.C. 115(a),substitute statements under 35 U.S.C.115(d), or assignment-statements under35 U.S.C. 115(e) that collectively havebeen executed by or with respect to allof the joint inventors for an applicationnaming joint inventors.Section 1.17: Section 1.17(g) isamended to refer to the filing of anapplication on behalf of an inventor bya person who otherwise showssufficient proprietary interest in thematter under § 1.46, rather than thefiling of an application by other than allthe inventors or by a person not theinventor under former § 1.47. Thischange is for consistency with thechanges to applicant practice in §§ 1.42,1.43, 1.45, and 1.46. Thus, an assigneeor obligated assignee will no longer berequired to file a petition and fee to beconsidered the applicant or to execute asubstitute statement (in lieu of an oathor declaration) with respect to anonsigning inventor.Section 1.17(i) is amended to refer tosupplying the name or names of theinventor or inventors in an applicationwithout either an application data sheetor an inventor’s oath or declaration(rather than just without an oath ordeclaration as prescribed by § 1.63).This change is for consistency with thechanges to practice for naming theinventors in § 1.41.Section 1.27: Section 1.27(c)(2) isamended to indicate that a writtenassertion of small entity status can besigned by: (1) The applicant (§ 1.42 or§ 1.421); (2) a patent practitioner ofrecord or a practitioner acting in arepresentative capacity under § 1.34; (3)the inventor or a joint inventor, if theinventor is the applicant; or (4) theassignee. This change is for consistencywith the change in practice concerningwho is the applicant for patent in § 1.42.This change also results in any writtenassertion being signed by or on behalf ofthe real party in interest, rather than bya party who no longer has a financialinterest in the application.Section 1.31: Section 1.31 is amendedto provide that an applicant for patentmay file and prosecute the applicant’sown case, or the applicant may givepower of attorney so as to berepresented by one or more patentpractitioners or joint inventors, exceptthat a juristic entity (e.g., organizationalassignee) must be represented by apatent practitioner even if the juristicentity is the applicant. This change isfor consistency with the change inpractice concerning who is theapplicant for patent in § 1.42. Thus, allpapers submitted on behalf of a juristicentity must be signed by a patentpractitioner unless otherwise specified,§ 1.33(b)(3). Juristic entities includecorporations (MPEP § 409.03(b)) or othernon-human entities created by law andgiven certain legal rights. This change isbecause juristic entities have beenattempting to prosecute patentapplications before the Office pro se andrequesting additional assistance fromexaminers. Juristic entities attempting toprosecute patent applications before theOffice pro se also make more proceduralerrors that result in delays inprosecution. Accordingly, this changewill facilitate a reduction in the Office’sbacklog and pendency by reducingprosecution delays caused byprocedural errors.Section 1.31 also provides that theOffice cannot aid in the selection of apatent practitioner.Section 1.32: Section 1.32(a)(2) isamended to provide that the term‘‘power of attorney’’ means a writtendocument by which a principalauthorizes one or more patentpractitioners or joint inventors to act onthe principal’s behalf. Section 1.32(a)(3)is amended to provide that the term‘‘principal’’ means the applicant (§ 1.42)for an application for patent and thepatent owner for a patent, including apatent in a supplemental examination orreexamination proceeding, and that theprincipal executes a power of attorneydesignating one or more patentpractitioners or joint inventors to act onthe principal’s behalf. Section 1.32(a)(4)is amended to provide that the term‘‘revocation’’ means the cancellation bythe principal of the authority previouslygiven to a patent practitioner or jointinventor to act on the principal’s behalf.Section 1.32(a)(6) is added to providethat the term ‘‘patent practitioner ofrecord’’ means a patent practitioner whohas been granted a power of attorney inan application, patent, or otherproceeding in compliance with§ 1.32(b), and that the terms‘‘practitioner of record’’ and ‘‘attorneyor agent of record’’ also mean a patentpractitioner who has been granted apower of attorney in an application,patent, or other proceeding incompliance with § 1.32(b). Thesechanges are for consistency with thechange in practice concerning theapplicant for patent in § 1.42.VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00008 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6Section 1.32(b) is amended to providethat a power of attorney must: (1) Be inwriting; (2) name one or morerepresentatives in compliance with§ 1.32(c); (3) give the representativepower to act on behalf of the principal;and (4) be signed by the applicant forpatent (§ 1.42) or the patent owner. Thisprovision also applies in reissueapplications, supplemental examinationproceedings, and reexaminationproceedings. These changes are forconsistency with the change in practiceconcerning who is the applicant forpatent in § 1.42.Section 1.32(b)(4) provides that apatent owner who was not the applicantunder § 1.46 must appoint any power ofattorney in compliance with §§ 3.71 and3.73. This covers a patent owner in areissue application who was not theapplicant under § 1.46 in theapplication for the original patent, aswell as a patent owner in asupplemental examination orreexamination proceeding who was notthe applicant under § 1.46.Section 1.32(d) is added to providethat a power of attorney from a priornational application for which benefit isclaimed under 35 U.S.C. 120, 121, or365(c) in a continuing application mayhave effect in the continuing applicationif a copy of the power of attorney fromthe prior application is filed in thecontinuing application unless: (1) Thepower of attorney was granted by theinventor; and (2) the continuingapplication names an inventor who wasnot named as an inventor in the priorapplication. Former § 1.63(d)(4)provided that, when filing continuationand divisional applications andincluding a copy of a declaration fromthe parent application, applicantsshould ‘‘identify’’ in the continuation ordivisional any change in power ofattorney that occurred after the filing ofthe parent application. The requirementin former § 1.63(d)(4) to ‘‘identify’’ thechange in power of attorney has beeninterpreted differently by applicants,with varying success of the Officerecognizing the change in power ofattorney. Attempts to comply haveincluded: filing a copy of the power ofattorney from the parent, filing a copyof only the notice of acceptance ofpower of attorney, and making astatement about the power of attorney ina transmittal letter that accompanied thecontinuation or divisional application.Sometimes applicants did notaccurately identify the change in powerof attorney (e.g., the power of attorneydocument in the parent applicationappointed specific practitioners byname and registration number, but thepapers filed in the continuation or

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48783sroberts on DSK5SPTVN1PROD with RULESdivisional application directed theOffice to recognize the practitionersassociated with a customer number ashaving power of attorney). Specificallyrequiring a copy of the power ofattorney in the continuing applicationin all situations (even where a change inpower did not occur in the priorapplication) will make the record clearwith respect to who has power ofattorney.The Office does not recommend thatpractitioners use a combineddeclaration and power of attorneydocument, and no longer provides acombined declaration and power ofattorney form on its Internet Web site.The power of attorney should be fromthe assignee where one exists.Otherwise, the assignee may be payingthe bill, while the inventor is providingthe power of attorney, thereby possiblyraising an issue as to who is thepractitioner’s client. Additionally,relationships between an assignee andthe inventors may deteriorate. It is notuncommon in these situations forinventors to stop cooperating and insome cases file powers of attorney in anattempt to control prosecution of theapplication.Section 1.32(e) is added to providethat if the power of attorney was grantedby the originally named inventive entityand an added inventor pursuant to§ 1.48 does not provide a power ofattorney consistent with the power ofattorney granted by the originallynamed inventive entity, the addition ofthe inventor results in the loss of thatpower of attorney upon grant of the§ 1.48 request. This provision does notpreclude a practitioner from actingpursuant to § 1.34, if applicable.Section 1.33: Section 1.33(a) isamended to specify that if an applicantprovides more than one correspondenceaddress (in a single paper or in differentpapers), the Office will select one of thespecified addresses for use as thecorrespondence address and, if given,may select the correspondence addressassociated with a Customer Numberover a typed correspondence address.This change pertains to the problem thatarises when applicants provide multiplecorrespondence addresses in a singlepaper (e.g., providing both a typedcorrespondence address and a CustomerNumber in a single paper) or multiplepapers (e.g., an oath or declaration, atransmittal letter, and a preliminaryamendment that each includes adifferent correspondence address), andthe Office inadvertently does not selectthe correspondence address actuallydesired by applicant. The Office maythen need to re-mail papers to thedesired address. This change does notaffect the hierarchy provided in§ 1.76(d) for inconsistencies between anapplication data sheet and otherdocuments. This change is designed toencourage applicants to review theirsubmissions carefully to ensure that theOffice receives clear instructionsregarding the correspondence address.Section 1.33(a) also provides that thecorrespondence address may bechanged by the parties set forth in§ 1.33(b)(1) (a patent practitioner ofrecord) or § 1.33(b)(3) (the applicantunder § 1.42)). Section 1.33(a) alsoprovides that prior to the appointmentof any power of attorney under § 1.32(b),the correspondence address may also bechanged by any patent practitionernamed in the application transmittalpapers who acts in a representativecapacity under the provisions of § 1.34.Section 1.33(a) no longer discusses thefiling of an oath or declaration under§ 1.63 as the Office is revising the rulesto allow applicants to postpone filingthe inventor’s oath or declaration untilthe application is otherwise incondition for allowance.Sections 1.33(b)(1) and (2) areamended to provide that amendmentsand other papers, except for writtenassertions pursuant to § 1.27(c)(2)(iii) or(c)(2)(iv), filed in the application mustbe signed by: (1) A patent practitionerof record; (2) a patent practitioner not ofrecord who acts in a representativecapacity under the provisions of § 1.34;or (3) the applicant (§ 1.42). Section1.33(b)(3) also provides that unlessotherwise specified (e.g., terminaldisclaimers and § 3.73(c) statements), allpapers submitted on behalf of a juristicentity must be signed by a patentpractitioner, as § 1.31 provides that ajuristic entity may prosecute a patentapplication only through a patentpractitioner.Section 1.33(f) is added to replaceformer § 1.63(d)(4) with respect to thecorrespondence address. Whereapplication papers (e.g., the inventor’soath or declaration) from a priorapplication are used in a continuingapplication and the correspondenceaddress was changed during theprosecution of the prior application, anapplication data sheet or separate paperidentifying the correspondence addressto be used for the continuingapplication must be submitted.Otherwise, the Office may not recognizethe change of correspondence addresseffected during the prosecution of theprior application. Historically, someapplicants would file continuingapplications with copies of papers fromthe prior application that includecorrespondence addresses to former lawfirms or correspondence addresses thatVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00009 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6are no longer current. This change willfacilitate the processing of patentapplications by the Office by making iteasier to determine the correctcorrespondence address and reduce thenumber of instances where the Officemails correspondence to an incorrectaddress.Section 1.33(g) is added to providethat a practitioner acting in arepresentative capacity whosecorrespondence address is thecorrespondence address of record in anapplication may change thecorrespondence address after the patenthas issued, provided that the change ofcorrespondence address is accompaniedby a statement that notice has beengiven to the patentee or owner. Section1.33(g) provides a means forpractitioners acting in a representativecapacity in an application to effect achange in correspondence address afterthe patent has granted but would notprovide authority to a practitioneracting under § 1.34 to change thecorrespondence address in anapplication. See § 1.33(a).Practitioners that file and prosecutean application in a representativecapacity, pursuant to § 1.34, usuallyprovide their business address as thecorrespondence address of record. Oncethe patent issues, practitioners haveattempted to withdraw as attorney oragent by filing a petition, and alsoattempt to change the correspondenceaddress to direct correspondence to thepatentee’s or owner’s address. Suchattempts have not been successful as therules did not permit the correspondenceaddress to be changed by a practitioneracting in a representative capacity, norwould the Office grant withdrawalwhere a practitioner is not of record. SeeChange in Procedure for Requests toWithdraw from Representation In aPatent Application, 1329 Off. Gaz. Pat.Office 99 (Apr. 8, 2008). There havebeen instances where practitionersacting in a representative capacity haveindicated that they have repeatedlyrequested that the client change thecorrespondence address, but the clienthas refused to submit the change ofcorrespondence address to the Office.Section 1.33(g) will permit practitionersto change the correspondence addressafter a patent has issued wherepractitioners have provided notice tothe patentees or owners.Section 1.36: Section 1.36(a) isamended to change ‘‘by an applicant forpatent (§ 1.41(b)) or an assignee of theentire interest of the applicant, or theowner of the entire interest of a patent’’to ‘‘by the applicant or patent owner.’’An assignee conducting prosecution ofa national patent application does so as

sroberts on DSK5SPTVN1PROD with RULES48784 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationsthe applicant (note that all paperssubmitted on behalf of a juristic entitymust be signed by a patent practitioner).Thus, there is no need to referseparately to the applicant and anassignee of the entire interest of theapplicant. This change is forconsistency with the change in practiceconcerning the applicant for patent in§ 1.42. In addition, the patent owner isthe owner of the entire interest of apatent. Section 1.36(a) is also amendedto change the parenthetical ‘‘or fewerthan all of the assignees of the entireinterest of the applicant or, in areexamination proceeding, fewer thanall the owners of the entire interest ofa patent’’ in the third sentence to ‘‘orfewer than all patent owners in asupplemental examination orreexamination proceeding.’’ Section1.36(a) is also amended to change thephrase ‘‘but the assignee of the entireinterest of the applicant may revokeprevious powers of attorney and giveanother power of attorney of theassignee’s own selection as provided in§ 1.32(b)’’ in the ultimate sentence to‘‘but the assignee may become theapplicant under § 1.46(c) and revokeany previous power of attorney andgrant a power of attorney as provided in§ 1.32(b).’’Section 1.41: Section 1.41(a) providesthat an application must include, or beamended to include, the name of theinventor for any invention claimed inthe application (the inventorship). See35 U.S.C. 115(a). As discussedpreviously, the ‘‘applicant’’ is providedfor in § 1.42.Section 1.41(b) provides that theapplicant may name the inventorship ofa nonprovisional application under 35U.S.C. 111(a) in the application datasheet in accordance with § 1.76 or theinventor’s oath or declaration. Section1.41(b) specifically provides that theinventorship of a nonprovisionalapplication under 35 U.S.C. 111(a) is theinventor or joint inventors set forth inthe application data sheet in accordancewith § 1.76 filed before or concurrentlywith the inventor’s oath or declaration.An application data sheet must besigned (§ 1.76(e)) to comply with § 1.76.An unsigned application data sheet istreated as only an applicationtransmittal letter. See § 1.76(e). Section1.41(b) also provides that if anapplication data sheet is not filed beforeor concurrently with the inventor’s oathor declaration, the inventorship is theinventor or joint inventors set forth inthe inventor’s oath or declaration,except as provided for in §§ 1.53(d)(4)(continued prosecution applications)and 1.63(d) (continuing applications).Section 1.41(b) also provides that oncean application data sheet or theinventor’s oath or declaration is filed ina nonprovisional application, anycorrection of inventorship must bepursuant to § 1.48. Section 1.41(b)finally provides that if neither anapplication data sheet nor the inventor’soath or declaration is filed during thependency of a nonprovisionalapplication, the inventorship is theinventor or joint inventors set forth inthe application papers filed pursuant to§ 1.53(b), unless the applicant files apaper, including the processing fee setforth in § 1.17(i), supplying the name ornames of the inventor or joint inventors.Applicants who wish to takeadvantage of the ability to name theinventors in an application data sheetrather than the inventor’s oath ordeclaration should take care to ensurethat an application data sheet under§ 1.76 that is signed in compliance with§ 1.33(b) is present on filing, or at leastis filed prior to the filing of anyinventor’s oath or declaration in theapplication. If an inventor’s oath ordeclaration is filed in the applicationprior to the filing of an application datasheet under § 1.76 that is signed incompliance with § 1.33(b), theinventorship named in the inventor’soath or declaration controls. Forexample, if an inventor’s oath ordeclaration naming only inventor ‘‘A’’ ispresent on filing without anaccompanying application data sheet,and a signed application data sheetnaming inventors ‘‘A’’ and ‘‘B’’ issubsequently filed in the application,the application will be treated asnaming only inventor ‘‘A’’ (the inventorprovided in the inventor’s oath ordeclaration) until the inventorship iscorrected under § 1.48(a).Section 1.41(c) provides that theinventorship of a provisionalapplication is the inventor or jointinventors set forth in the cover sheet asprescribed by § 1.51(c)(1). Section1.41(c) also provides that once a coversheet as prescribed by § 1.51(c)(1) isfiled in a provisional application, anycorrection of inventorship must bepursuant to § 1.48. Section 1.41(c)finally provides that if a cover sheet asprescribed by § 1.51(c)(1) is not filedduring the pendency of a provisionalapplication, the inventorship is theinventor or joint inventors set forth inthe application papers filed pursuant to§ 1.53(c), unless the applicant files apaper including the processing fee setforth in § 1.17(q), supplying the name ornames of the inventor or joint inventors.Section 1.41(d) provides that in eithera nonprovisional application under 35U.S.C. 111(a) filed without anapplication data sheet or the inventor’sVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00010 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6oath or declaration, or in a provisionalapplication filed without a cover sheetas prescribed by § 1.51(c)(1), the nameand residence of each person believed tobe an actual inventor should beprovided when the application paperspursuant to § 1.53(b) or § 1.53(c) arefiled.Section 1.41(e) provides that theinventorship of an internationalapplication entering the national stageunder 35 U.S.C. 371 is the inventor orjoint inventors set forth in theapplication data sheet in accordancewith § 1.76 filed with the initialsubmission under 35 U.S.C. 371. Thus,the applicant in an internationalapplication may change inventorship asto the U.S. at the time of national stageentry by simply filing an applicationdata sheet in accordance with § 1.76with the initial submission under 35U.S.C. 371 naming the inventor or jointinventors. Section 1.41(e) also providesthat unless the initial submission under35 U.S.C. 371 is accompanied by anapplication data sheet in accordancewith § 1.76 setting forth the inventor orjoint inventors, the inventorship is theinventor or joint inventors set forth inthe international application, whichincludes any change effected under PCTRule 92bis. Section 1.41(e) does notprovide the ability to name theinventors or joint inventors via theinventor’s oath or declaration evenwhen an application data sheet inaccordance with § 1.76 is not provided.Section 1.42: Section 1.42 defineswho is the applicant for a patent.Section 1.42(a) provides that the word‘‘applicant’’ when used in this titlerefers to the inventor or all jointinventors, or to the person applying fora patent as provided in §§ 1.43, 1.45, or1.46.Section 1.42(b) provides that if aperson is applying for a patent asprovided in § 1.46, the word‘‘applicant’’ refers to the assignee, theperson to whom the inventor is underan obligation to assign the invention, orthe person who otherwise showssufficient proprietary interest in thematter, who is applying for a patentunder § 1.46 and not the inventor.Section 1.46 (discussed subsequently)implements 35 U.S.C. 118 and providesthat a person to whom the inventor hasassigned or is under an obligation toassign the invention may make anapplication for patent, and that a personwho otherwise shows sufficientproprietary interest in the matter maymake an application for patent on behalfof and as agent for the inventor on proofof the pertinent facts and a showing thatsuch action is appropriate to preservethe rights of the parties.

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48785sroberts on DSK5SPTVN1PROD with RULESSection 1.42(c) provides that if fewerthan all joint inventors are applying fora patent as provided in § 1.45, thephrase ‘‘the applicant’’ means the jointinventors who are applying for thepatent without the omitted inventor(s).Section 1.42(d) provides that anyperson having authority may deliver anapplication and fees to the Office onbehalf of the applicant. However, anoath or declaration, or substitutestatement in lieu of an oath ordeclaration, may be executed only inaccordance with § 1.63 or 1.64, acorrespondence address may beprovided only in accordance with§ 1.33(a), and amendments and otherpapers must be signed in accordancewith § 1.33(b).Section 1.42(e) provides that theOffice may require additionalinformation where there is a questionconcerning ownership or interest in anapplication, and a showing may berequired from the person filing theapplication that the filing wasauthorized where such authorizationcomes into question.Section 1.43: Section 1.43 providesthat if an inventor is deceased or underlegal incapacity, the legal representativeof the inventor may make an applicationfor patent on behalf of the inventor; andthat if an inventor dies during the timeintervening between the filing of theapplication and the granting of a patentthereon, the letters patent may be issuedto the legal representative upon properintervention. See 35 U.S.C. 117 (‘‘[l]egalrepresentatives of deceased inventorsand of those under legal incapacity maymake application for patent uponcompliance with the requirements andon the same terms and conditionsapplicable to the inventor’’). Section1.43 refers to § 1.64 concerning theexecution of a substitute statement by alegal representative in lieu of an oath ordeclaration.Section 1.45: Section 1.45 pertains toan application for patent by jointinventors. Section 1.45(a) provides thatjoint inventors must apply for a patentjointly, and that each joint inventormust make the inventor’s oath ordeclaration required by § 1.63, except asprovided for in § 1.64. See 35 U.S.C.116(a) (‘‘[w]hen an invention is made bytwo or more persons jointly, they shallapply for patent jointly and each makethe required oath, except as otherwiseprovided in this title.’’). Section 1.45(a)also provides that if a joint inventorrefuses to join in an application forpatent or cannot be found or reachedafter diligent effort, the other jointinventor or inventors may make theapplication for patent on behalf ofthemselves and the omitted inventor.See 35 U.S.C. 116(b) (‘‘[i]f a jointinventor refuses to join in anapplication for patent or cannot befound or reached after diligent effort,the application may be made by theother inventor on behalf of himself andthe omitted inventor.’’). Section 1.45(a)also cross-references § 1.64 concerningthe execution of a substitute statementby the other joint inventor or inventorsin lieu of an oath or declaration.Sections 1.45(b) and (c) contain theprovisions of pre-existing §§ 1.45(b) and(c).Section 1.46: Section 1.46 is amendedto provide for the filing of anapplication for patent by an assignee, aperson to whom the inventor is underan obligation to assign the invention, ora person who otherwise showssufficient proprietary interest in thematter under 35 U.S.C. 118. Section1.46(a) provides that a person to whomthe inventor has assigned or is under anobligation to assign an invention maymake an application for patent. Section1.46(a) also provides that a person whootherwise shows sufficient proprietaryinterest in the matter may make anapplication for patent on behalf of andas agent for the inventor on proof of thepertinent facts and a showing that suchaction is appropriate to preserve therights of the parties. The ability for aperson who otherwise shows sufficientproprietary interest in the matter waspreviously set forth in former § 1.47(b),which restricted such ability tosituations in which all of the inventorsrefused to execute the application, orcould not be found or reached afterdiligent effort.Section 1.46(b) provides that if anapplication under 35 U.S.C. 111 is madeby a person other than the inventorunder § 1.46(a), the application mustcontain an application data sheet under§ 1.76 specifying in the applicantinformation section (§ 1.76(b)(7)) theassignee, the person to whom theinventor is under an obligation to assignthe invention, or the person whootherwise shows sufficient proprietaryinterest in the matter. Section 1.46(b)further provides that if the applicationis the national stage of an internationalapplication, the person who isidentified in the international stage asan applicant for the United States is theperson specified as the originalapplicant for the national stage. Whileidentifying the party making theapplication for patent (the applicant) inan application data sheet is not a filingdate requirement, a delay in naming theapplicant under § 1.46 in an applicationdata sheet may cause it to appear thatthe applicant is the inventor and thusrequiring the party to proceed underVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00011 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6§§ 3.71 and 3.73 to become theapplicant.Section 1.46(b)(1) provides that if theapplicant is the assignee or person towhom the inventor is under anobligation to assign an invention, thedocumentary evidence of ownership(e.g., assignment for an assignee,employment agreement for an obligatedassignee) should be recorded asprovided for in 37 CFR part 3 no laterthan the date the issue fee is paid in theapplication. Section 1.46(b)(2) providesthat if the applicant is a person whootherwise shows sufficient proprietaryinterest in the matter, such applicantmust submit a petition including: (1)The fee set forth in § 1.17(g); (2) ashowing that such person has sufficientproprietary interest in the matter; and(3) a statement that making theapplication for patent by a person whootherwise shows sufficient proprietaryinterest on behalf of and as agent for theinventor is appropriate to preserve therights of the parties. A discussion of theevidence necessary for a showing that aperson has sufficient proprietaryinterest in the matter is set forth inMPEP § 409.03(f).Section 1.46(c) provides that anyrequest to correct or update the name ofthe applicant after an applicant has beenspecified under § 1.46(b) must includean application data sheet under § 1.76specifying the correct or updated nameof the applicant in the applicantinformation section (§ 1.76(b)(7)). Thus,if there is no change in the applicantitself but just the applicant’s name (dueto a correction or name change), theapplicant need only submit anapplication data sheet specifying thecorrect or updated name of theapplicant in the applicant informationsection (§ 1.76(b)(7)). Section 1.46(c)also provides that any request to changethe applicant after an original applicanthas been specified under § 1.46(b) mustinclude an application data sheet under§ 1.76 specifying the applicant in theapplicant information section(§ 1.76(b)(7)) and must comply with§§ 3.71 and 3.73. Thus, if there is achange of applicant under § 1.46(b)(either from the inventor to the assignee,or from one assignee to anotherassignee), the new applicant mustestablish its ownership of theapplication under §§ 3.71(b) and 3.73.Section 1.46(d) provides that even ifthe whole or a part interest in theinvention or in the patent to be issuedis assigned or obligated to be assigned,an oath or declaration must be executedby the actual inventor or each actualjoint inventor, except as provided for in§ 1.64. This provision is similar to theprovisions of former § 1.46. Section 1.46

sroberts on DSK5SPTVN1PROD with RULES48786 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationsalso refers to § 1.64 concerning theexecution of a substitute statement byan assignee, person to whom theinventor is under an obligation to assignthe invention, or a person whootherwise shows sufficient proprietaryinterest in the matter.Section 1.46(e) provides that if apatent is granted on an application filedunder § 1.46 by a person other than theinventor, the patent shall be granted tothe real party in interest (e.g., thecurrent assignee for an application thathas been assigned). Otherwise, thepatent may be issued to the assignee orjointly to the inventor and the assigneeas provided in § 3.81.Section 1.46(e) also provides thatwhere a real party in interest has filedan application under § 1.46, theapplicant shall notify the Office of anychange in the real party in interest nolater than payment of the issue fee, andthat the Office will treat the absence ofsuch a notice as an indication that therehas been no change in the real party ininterest. This provision implements therequirement of 35 U.S.C. 118 that: ‘‘[i]fthe Director grants a patent on anapplication filed under this section by aperson other than the inventor, thepatent shall be granted to the real partyin interest and upon such notice to theinventor as the Director considers to besufficient.’’ Section 3.81 provides thatan ‘‘application may issue in the nameof the assignee * * * where a requestfor such issuance is submitted withpayment of the issue fee.’’ This isaccomplished by providing the assigneeinformation in box 3 of the Part B—Fee(s) Transmittal form, PTOL–85B. Theuse of box 3 will be required where thereal party in interest has changed fromfiling of the application and theapplication was filed pursuant to § 1.46.Section 1.46(f) provides that theOffice may publish notice of the filingof the application by a person whootherwise shows sufficient proprietaryinterest in the Official Gazette.Section 1.47: Section 1.47 is removedand reserved. As discussed previously,execution of a substitute statement inlieu of an oath or declaration is nowprovided for in § 1.64.Section 1.48: Section 1.48 is amendedto no longer include a ‘‘withoutdeceptive intention’’ requirement as thisrequirement has been eliminated from35 U.S.C. 116 in section 20 of the AIA.Section 1.48 is also amended to nolonger require the written consent ofany assignee as the Office does notrequire express written consent by anassignee to other amendments to anapplication.Section 1.48(a) provides for correctionof inventorship in a nonprovisionalapplication filed either under 35 U.S.C.111(a) or resulting from an internationalapplication in which the basic nationalfee under 35 U.S.C. 41(a)(1)(F) has beenpaid. Section 1.48(a) provides that anyrequest to correct or change theinventorship once the inventorship hasbeen established under § 1.41 mustinclude: (1) An application data sheet inaccordance with § 1.76 that identifieseach inventor by his or her legal name;and (2) the processing fee set forth in§ 1.17(i). Due to the streamlining of therequirements for correction ofinventorship, it is no longer necessary tohave separate provisions based uponwhether the correction is necessitatedby the original inventorship being inerror or by an amendment to the claims.Section 1.48(b) also provides that anoath or declaration as required by § 1.63,or a substitute statement in compliancewith § 1.64, will be required for anyactual inventor who has not yetexecuted such an oath or declaration.Section 1.48(c) is currently reserved.Section 1.48(d) provides forcorrection of inventorship in aprovisional application filed under 35U.S.C. 111(b). Section 1.48(d) providesthat once a cover sheet as prescribed by§ 1.51(c)(1) is filed in a provisionalapplication, any request to correct orchange the inventorship must include:(1) a request, signed by a party set forthin § 1.33(b), to correct the inventorshipthat identifies each inventor by his orher legal name; and (2) the processingfee set forth in § 1.17(q).Section 1.48(e) provides that theOffice may require such otherinformation as may be deemedappropriate under the particularcircumstances surrounding thecorrection of inventorship.Section 1.48(f) provides forcorrections to the name of the inventoror a joint inventor, or the order of thenames of joint inventors. Due to thestreamlining of the requirements forcorrection of inventorship, it is nolonger necessary to have distinctprocedures for correction ofinventorship and for correction to thename of an inventor or to the order ofthe names of the inventors. Correctionsto the name of an inventor or to theorder of the names of the inventors wereformerly provided for as exceptionprocesses, such as under § 1.182. SeeMPEP §§ 605.04(b), (c), and (f). Section1.48(f) specifically provides that anyrequest to correct or update the name ofthe inventor or a joint inventor, or theorder of the names of joint inventors, ina nonprovisional application mustinclude: (1) An application data sheet inaccordance with § 1.76 that identifieseach inventor by his or her legal nameVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00012 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6in the desired order; and (2) theprocessing fee set forth in § 1.17(i).Section 1.48(g) provides that theprovisions of § 1.48 do not apply toreissue applications. Section 1.48(g) alsorefers to §§ 1.171 and 1.175 forcorrection of inventorship in a patentvia a reissue application.Section 1.48(h) provides a crossreference to § 1.324 for correction ofinventorship in a patent.Section 1.48(i) provides for correctionof inventorship in an interference orcontested case before the Patent Trialand Appeal Board. Section 1.48(i)provides that in an interference underpart 41, subpart D, of this title, a requestfor correction of inventorship in anapplication must be in the form of amotion under § 41.121(a)(2) of this title.Section 1.48(i) also provides that in acontested case under part 42, subpart D,of this title, a request for correction ofinventorship in an application must bein the form of a motion under § 42.22 ofthis title. Section 1.48(i) finally providesthat the motion under §§ 41.121(a)(2) or42.22 of this title must comply with therequirements of § 1.48(a).Section 1.51: Section 1.51(b)(2) isamended to refer to ‘‘the inventor’s oathor declaration’’ and to cross-reference§§ 1.63 and 1.64. See previousdiscussion of § 1.16(f).Section 1.52: Section 1.52(b) and (c)are amended to refer to ‘‘the inventor’soath or declaration.’’ See previousdiscussion of § 1.16(f).Section 1.52(b) is amended to alsorefer to supplemental examinationproceedings.Section 1.52(c) is amended to providethat interlineation, erasure, cancellation,or other alteration of the applicationpapers may be made before or after thesigning of the inventor’s oath ordeclaration referring to thoseapplication papers, provided that thestatements in the inventor’s oath ordeclaration remain applicable to thoseapplication papers. Thus, § 1.52(c) nolonger prohibits changes after executionof the inventor’s oath or declaration.Section 1.52(c) also provides that asubstitute specification (§ 1.125) may berequired if the application papers do notcomply with paragraphs (a) and (b) ofthis section.Section 1.52(d) is amended to belimited to nonprovisional or provisionalapplications filed under 35 U.S.C.111(a) and (b), respectively.Section 1.53: Section 1.53 is amendedto change the phrase ‘‘oath ordeclaration’’ to the phrase ‘‘theinventor’s oath or declaration’’throughout. See previous discussion of§ 1.16(f).

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48787sroberts on DSK5SPTVN1PROD with RULESSection 1.53(c) is also amended toreplace ‘‘the first paragraph of 35 U.S.C.112’’ with ‘‘35 U.S.C. 112(a)’’ forconsistency with the change to 35U.S.C. 112 in the AIA.Section 1.53(c)(3) is also amended toreplace ‘‘the second paragraph of 35U.S.C. 112’’ with ‘‘35 U.S.C. 112(b)’’ forconsistency with the change to 35U.S.C. 112 in the AIA.Section 1.53(f) is amended to revisethe missing parts practice to allowapplicants to postpone filing theinventor’s oath or declaration until theapplication is otherwise in condition forallowance.Section 1.53(f)(1) provides for a notice(if the applicant has provided acorrespondence address) if theapplication does not contain the basicfiling fee, the search fee, or theexamination fee, or if the applicationunder § 1.53(b) does not contain theinventor’s oath or declaration. Section1.53(f)(1) provides that applicant mustpay the basic filing fee, search fee, andexamination fee, and pay the surchargeif required by § 1.16(f) within the timeperiod set in the notice to avoidabandonment. Section 1.53(f)(3)(discussed subsequently) sets forth thetime period for filing the inventor’s oathor declaration in an application under§ 1.53(b) (an application under § 1.53(d)uses the inventor’s oath or declarationfrom the prior application) and providesthe conditions under which anapplicant may postpone filing theinventor’s oath or declaration until theapplication is otherwise in condition forallowance.Section 1.53(f)(2) provides for thesituation where applicant has notprovided a correspondence address inan application under § 1.53(b), and theapplication does not contain the basicfiling fee, the search fee, or theexamination fee, or does not contain theinventor’s oath or declaration. Section1.53(f)(2) provides that if the applicanthas not provided a correspondenceaddress, the applicant must pay thebasic filing fee, search fee, andexamination fee, and pay the surchargeif required by § 1.16(f), within twomonths from the filing date of theapplication to avoid abandonment. Asdiscussed previously, § 1.53(f)(3)(discussed subsequently) sets forth thetime period for filing the inventor’s oathor declaration in an application under§ 1.53(b) and provides the conditionsunder which an applicant may postponefiling the inventor’s oath or declarationuntil the application is otherwise incondition for allowance.Section 1.53(f)(3) sets forth the timeperiod for filing the inventor’s oath ordeclaration in an application under§ 1.53(b) and provides the conditionsunder which an applicant may postponefiling the inventor’s oath or declarationuntil the application is otherwise incondition for allowance. Section1.53(f)(3) specifically provides that theinventor’s oath or declaration in anapplication under § 1.53(b) must also befiled within the period specified in§ 1.53(f)(1) or (f)(2), except that the filingof the inventor’s oath or declaration maybe postponed until the application isotherwise in condition for allowanceunder the conditions specified in§ 1.53(f)(3)(i) through (f)(3)(ii). Section1.53(f)(3)(i) provides that theapplication must be an original (nonreissue)application that contains anapplication data sheet in accordancewith § 1.76 identifying: (1) eachinventor by his or her legal name; and(2) a mailing address where the inventorcustomarily receives mail, andresidence, if an inventor lives at alocation which is different from wherethe inventor customarily receives mail,for each inventor. Section 1.53(f)(3)(ii)provides that the applicant must file anoath or declaration in compliance with§ 1.63, or substitute statement incompliance with § 1.64, executed by orwith respect to each actual inventor nolater than the expiration of the timeperiod set in the ‘‘Notice ofAllowability’’ to avoid abandonment,when the applicant is notified in a‘‘Notice of Allowability’’ that anapplication is otherwise in condition forallowance. The time period set in a‘‘Notice of Allowability’’ is notextendable. See § 1.136(c). The Officemay dispense with the notice providedfor in § 1.53(f)(1) if an oath ordeclaration under § 1.63, or substitutestatement under § 1.64, executed by orwith respect to each actual inventor hasbeen filed before the application is incondition for allowance.Under former practice, the Officeissued a Notice to File Missing Parts ifan application under § 1.53(b) did notcontain the basic filing fee, the searchfee, or the examination fee, or theinventor’s oath or declaration. If theOffice issued a Notice to File MissingParts, the applicant was given a timeperiod (usually two months) withinwhich to file the missing basic filing fee,the search fee, the examination fee, orthe inventor’s oath or declaration andpay the surcharge required by § 1.16(f)to avoid abandonment. See MPEP§ 601.01(a). The Office is modifying thisprocess such that if an applicationunder § 1.53(b) contains the applicablefiling fees (basic filing fee, search fee,the examination fee, any applicableexcess claims fee, and any applicableVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00013 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6application size fee), the surchargerequired by § 1.16(f), and a signedapplication data sheet providing theinformation required by § 1.53(f)(3)(i),but does not include the inventor’s oathor declaration, the Office will not issuea Notice to File Missing Parts requiringthe applicant to file the inventor’s oathor declaration. If an application under§ 1.53(b) that does not contain theinventor’s oath or declaration also doesnot contain the applicable filing fees, orthe surcharge required by § 1.16(f), or asigned application data sheet providingthe information required by§ 1.53(f)(3)(i), the Office will issue aNotice to File Missing Parts giving theapplicant a time period (usually twomonths) within which to file themissing filing fees, the surchargerequired by § 1.16(f), or signedapplication data sheet providing theinformation required by § 1.53(f)(3)(i)(or the inventor’s oath or declaration) toavoid abandonment. In either situation,the inventor’s oath or declaration willnot be required within the period forreply to the Notice to File Missing Partsif the applicant provides a signedapplication data sheet providing theinformation required by § 1.53(f)(3)(i)within the period for reply to the Noticeto File Missing Parts. The filing fees andsurcharge required by § 1.16(f),however, must be filed within theperiod for reply to the Notice to FileMissing Parts to avoid abandonment.If an application is in condition forallowance and includes an oath ordeclaration in compliance with § 1.63,or substitute statement in compliancewith § 1.64, executed by or with respectto each actual inventor, the Office willissue a ‘‘Notice of Allowability’’ (PTOL–37) and a ‘‘Notice of Allowance andFee(s) Due’’ (PTOL–85). If anapplication is in condition forallowance but does not include an oathor declaration in compliance with§ 1.63, or a substitute statement incompliance with § 1.64, executed by orwith respect to each actual inventor, theOffice will issue a ‘‘Notice ofAllowability’’ (PTOL–37) (but not a‘‘Notice of Allowance and Fee(s) Due’’(PTOL–85)) giving the applicant threemonths to file an oath or declaration incompliance with § 1.63, or substitutestatement in compliance with § 1.64,executed by or with respect to eachactual inventor, to avoid abandonment.This three-month time period is notextendable under § 1.136(a). The‘‘Notice of Allowance and Fee(s) Due’’(PTOL–85)) will not be issued until theapplication includes an oath ordeclaration in compliance with § 1.63,or substitute statement in compliance

sroberts on DSK5SPTVN1PROD with RULES48788 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationswith § 1.64, executed by or with respectto each actual inventor.Section 1.53(f)(4) contains theprovisions of former § 1.53(f)(3).Section 1.53(f)(5) contains theprovisions of former § 1.53(f)(4).Section 1.53(f)(6) contains theprovisions of former § 1.53(f)(5).Section 1.53(h) is amended to providean exception for the situation in whichthe inventor’s oath or declaration is notfiled until the application is otherwisein condition for allowance under§ 1.53(f)(3).Section 1.55: Sections 1.55(a)(1)(i),(c), and (d)(1)(ii) are amended to requirea foreign priority claim be identified inan application data sheet (§ 1.76). 35U.S.C. 119(b) does not specify theparticular location in the application forsetting forth a claim to the benefit of aprior foreign application. Additionally,§ 1.55 formerly did not specify where inthe application a foreign priority claimmust be, but former § 1.63(c) requiredthat the foreign priority claim be in anapplication data sheet or identified inthe oath or declaration. The change to§ 1.55 in this final rule establishes asingle location for the foreign priorityclaim in the application data sheet,which would facilitate applicationprocessing by providing practitionerswith a clear location for the foreignpriority claim, and the Office with onelocation to locate the foreign priorityclaim quickly. Formerly, the Office hadto look at the specification, amendmentsto the specification, the oath ordeclaration, the application data sheet(if provided), and elsewhere todetermine the priority claim. Inaddition, when applicants providedinconsistent information relating to theclaim for foreign priority, the Office hadto then determine which priority claimgoverned.Additionally, providing thisinformation in a single location willfacilitate review of patents and patentapplication publications, becauseapplications frequently set forth abenefit and/or foreign priority claim inthe first sentence(s) of the specification,which is superseded by an applicationdata sheet that includes a differentbenefit or foreign priority claim, andthus the benefit claim and/or foreignpriority information contained on thefront page of the patent or patentapplication publication is different fromthe benefit claim and/or foreign priorityclaim included in the first sentence(s) ofthe specification. While the benefit and/or foreign priority claim on the frontpage of the patent or patent applicationpublication is usually correct, anyone(including an examiner, a practitioner orthe public) reviewing the patent orpatent application publication mustreview the file history of the applicationto be certain of its correctness. Sincemost applications are filed with anapplication data sheet, requiring thebenefit and/or foreign priority claims tobe included in the application datasheet will not require most practitionersto change their practice.35 U.S.C. 119(b) provides that theforeign application is identified byspecifying the application number,country or intellectual propertyauthority, and filing date of each foreignapplication for which priority isclaimed. Section 1.55(a)(1) and (c) thusprovide that the foreign priority claimmust identify the foreign application forwhich priority is claimed by specifyingthe application number, country (orintellectual property authority), day,month, and year of its filing. Inaddition, § 1.55(a)(1)(i) requiresidentification of any foreign applicationhaving a filing date before that of theapplication for which priority isclaimed by specifying the applicationnumber, country (or intellectualproperty authority), day, month, andyear of its filing. Providing thisinformation in the application datasheet constitutes the claim for foreignpriority as required by 35 U.S.C. 119(b)and § 1.55(a).Section 1.56: Section 1.56(c)(3) isamended to indicate that its provisionsalso apply to every other person who issubstantively involved in thepreparation or prosecution of theapplication and who is associated withthe inventor, the applicant, an assignee,or anyone to whom there is anobligation to assign the application.This change is for consistency with thechange in practice concerning who isthe applicant for patent in § 1.42.Section 1.59: Section 1.59(a)(2) isamended to refer to any preliminaryamendment present on the filing date ofthe application in the parenthetical forconsistency with § 1.115(a)(1).Section 1.63: Section 1.63(a) providesthat the inventor, or each individualwho is a joint inventor of a claimedinvention, in an application for patentmust execute an oath or declarationdirected to the application, except asprovided for in § 1.64. See 35 U.S.C.115(a). Section 1.63(a) further providesthat an oath or declaration must: (1)Identify the inventor or joint inventorexeuting the oath or declaration by hisor her legal name; (2) identify theapplication to which it is directed; (3)include a statement that the personexecuting the oath or declarationbelieves the named inventor or jointinventor to be the original inventor oran original joint inventor of a claimedVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00014 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6invention in the application for whichthe oath or declaration is beingsubmitted; and (4) state that theapplication was made or was authorizedto be made by the person executing theoath or declaration. The requirementsthat an oath or declaration include astatement that the person executing theoath or declaration believes the namedinventor or joint inventor to be theoriginal inventor or an original jointinventor of a claimed invention in theapplication for which the oath ordeclaration is being submitted, and statethat the application was made or wasauthorized to be made by the personexecuting the oath or declaration arerequirements of 35 U.S.C. 115(a) and (b).The requirements that an oath ordeclaration must identify the inventoror joint inventor executing the oath ordeclaration by his or her legal name andidentify the application to which it isdirected are necessary for the Office toensure that there is compliance with therequirement of 35 U.S.C. 115(a) thateach individual who is the inventor ora joint inventor of a claimed inventionin an application for patent hasexecuted an oath or declaration inconnection with the application (exceptas provided in 35 U.S.C. 115).Section 1.63(a)(1) simplifies therequirement for the inventor’s name tobe his or her legal name withoutreference to a family or given name. Therequirement for the inventor’s legalname is sufficient, given thatindividuals do not always have both afamily name and a given name, or havevarying understandings of what a‘‘given’’ name requires.Section 1.63(a)(2) contains thelanguage of former § 1.63(b)(1)(requiring identification of theapplication to which the oath ordeclaration is directed).Section 1.63(a)(3) no longer includesa requirement for identifying thecountry of citizenship for each inventor,as this information is no longer requiredby 35 U.S.C. 115.Section 1.63(a)(4) no longer includesthe requirement that the personexecuting the oath or declaration statethat he or she is believed to be the‘‘first’’ inventor, as this statement is nolonger provided for by 35 U.S.C115(b)(2) and would not be consistentwith a first inventor to file system.Section 1.63(a)(4) does include arequirement from 35 U.S.C. 115(b)(1),not present in former 35 U.S.C. 115 or§ 1.63, that the oath or declaration statethat the application was made or wasauthorized to be made by the personexecuting the oath or declaration.Section 1.63(b) provides that unlesssuch information is supplied in an

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48789sroberts on DSK5SPTVN1PROD with RULESapplication data sheet in accordancewith § 1.76, the oath or declaration mustalso identify: (1) each inventor by his orher legal name; and (2) a mailingaddress where the inventor customarilyreceives mail, and (3) residence, if aninventor lives at a location which isdifferent from where the inventorcustomarily receives mail, for eachinventor. Therefore, the applicant is notrequired to name each inventor in asingle oath or declaration as long as theinventorship is provided in anapplication data sheet in accordancewith § 1.76. This will permit each jointinventor to execute an oath ordeclaration stating only that the jointinventor executing the oath ordeclaration is an original joint inventorof the claimed invention in theapplication for which the oath ordeclaration is being submitted. Thephrase ‘‘application data sheet inaccordance with § 1.76’’ requires thatthe application data sheet be signed incompliance with § 1.33(b). An unsignedapplication data sheet will be treatedonly as a transmittal letter.The requirement for identification ofa mailing address is clarified by notingthat it is the address where the inventor‘‘customarily receives mail,’’ which mayencompass an address where theinventor works, a post office box, orother address where mail is receivedeven if it is not the main mailingaddress of the inventor. The mailingaddress is for the benefit of the inventorin the event that the Office would needto contact the inventor directly.Section 1.63 is also amended toeliminate the requirement foridentifying the claim for foreign priorityunder § 1.55 in the oath or declaration.This change reflects the Office’s desireto have claims for foreign priority under§ 1.55 and claims for domestic benefitunder § 1.78 be presented in anapplication data sheet (§ 1.76). Theformer requirement that the domesticclaim for benefit be placed in the firstsentence(s) of the specification or anapplication data sheet (§ 1.76), whilerequiring that a foreign priority claim beidentified in an oath or declaration orapplication data sheet, has led toconfusion by applicants as to the properplacement of these priority or benefitclaims and to Office processing issues ofsuch claims. As section 3 of the AIAplaced foreign priority claims on equalfooting with domestic benefit claims inregard to what may be relied upon as aprior art date, it is important that therebe one unified place that the Office andthe public rely upon in determiningthese claims. Accordingly, §§ 1.55 and1.78 are amended to provide a unifiedway (the application data sheet) topresent the claims that will lead to amore reliable placement of the claims ina printed patent or a patent applicationpublication.Section 1.63(c) provides that a personmay not execute an oath or declarationfor an application unless that person hasreviewed and understands the contentsof the application, including the claims,and is aware of the duty to disclose tothe Office all information known to theperson to be material to patentability asdefined in § 1.56. Thus, an oath ordeclaration under § 1.63 is no longerrequired to contain the ‘‘reviewed andunderstands’’ clause and ‘‘duty todisclose’’ clause of former § 1.63(b)(2)and (b)(3). However, § 1.63 still requiresthat a person executing an oath ordeclaration for an application reviewand understand the contents of theapplication, and be aware of the duty ofdisclosure under § 1.56. Section 1.63(c)also provides that there is no minimumage for a person to be qualified toexecute an oath or declaration, but theperson must be competent to execute,i.e., understand, the document that theperson is executing. This provisioncontains the language of former§ 1.63(a)(1).Section 1.63(d) implements theprovisions of 35 U.S.C. 115(g). Section1.63(d)(1) provides that a newlyexecuted oath or declaration under§ 1.63, or substitute statement under§ 1.64, is not required under § 1.51(b)(2)and § 1.53(f) or § 1.497 for an inventorin a continuing application that claimsthe benefit under 35 U.S.C. 120, 121, or365(c) in compliance with § 1.78 of anearlier-filed application, provided thatan oath or declaration in compliancewith § 1.63, or substitute statementunder § 1.64, was executed by or withrespect to such inventor and was filedin the earlier-filed application, and acopy of such oath, declaration, orsubstitute statement showing thesignature or an indication thereon thatit was executed, is submitted in thecontinuing application. Section1.63(d)(2) provides that the inventorshipof a continuing application filed under35 U.S.C. 111(a) is the inventor or jointinventors specified in the applicationdata sheet filed before or concurrentlywith the copy of the inventor’s oath ordeclaration from the earlier-filedapplication. If an application data sheetis not filed before or concurrently withthe copy of the inventor’s oath ordeclaration from the earlier-filedapplication, the inventorship is theinventorship set forth in the copy of theinventor’s oath or declaration from theearlier-filed application, unless the copyof the inventor’s oath or declaration isaccompanied by a statement signedVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00015 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6pursuant to § 1.33(b) stating the name ofeach inventor in the continuingapplication. Section 1.63(d)(3) providesthat any new joint inventor named inthe continuing application must providean oath or declaration in compliancewith § 1.63, except as provided for in§ 1.64.Section 1.63(e) implements theprovisions of 35 U.S.C. 115(e). Section1.63(e)(1) provides that an assignmentmay also serve as an oath or declarationrequired by § 1.63 if the assignment: (1)includes the information and statementsrequired under § 1.63(a) and (b); and (2)a copy of the assignment is recorded asprovided for in 37 CFR part 3. Theassignment, including the informationand statements required under § 1.63(a)and (b), must be executed by theindividual who is under the obligationof assignment. Section 1.63(e)(2)provides that any reference to an oath ordeclaration under § 1.63 includes anassignment as provided for in § 1.63(e).Applicants should be mindful of thechange to § 3.31 requiring a conspicuousindication, such as by use of a checkboxon the assignment cover sheet, toalert the Office that an assignmentsubmitted with an application issubmitted for a dual purpose: recordingin the assignment database, such as tosupport a power of attorney, and for usein the application as the oath ordeclaration. Assignments cannot berecorded unless an application numberis provided against which theassignment is to be recorded. When anassignment is submitted for recordingalong with a paper application, theassignment is separated from the paperapplication and forwarded to theAssignment Recordation Branch forrecording in its database at the timewhere the application is assigned anapplication number. The assignmentdoes not become part of the applicationfile. If the applicant indicates that anassignment-statement is also an oath ordeclaration, the Office will scan theassignment into the Image File Wrapper(IFW) file for the application beforeforwarding it to the AssignmentRecordation Branch. Failure to utilizethe check-box will result in a Notice toFile Missing Parts of NonprovisionalApplication requiring an inventor’s oathor declaration as the assignment will notbe made part of the application file norwill the Office recognize that the § 1.63oath or declaration requirement hasbeen satisfied. A copy of the assignmentwould need to be submitted in reply tothe Notice along with the surcharge forthe late submission of the inventor’soath or declaration.For EFS–Web filing of applicationpapers, EFS–Web does not accept

sroberts on DSK5SPTVN1PROD with RULES48790 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationsassignments for recording purposeswhen filing an application. See LegalFramework for Electronic FilingSystem—Web (EFS–Web), 74 FR 55200,55202 (Oct. 27, 2009). Recording ofassignments may only be doneelectronically in EPAS (ElectronicPatent Assignment System),notwithstanding the existence of a linkfrom EFS–Web to EPAS that can beutilized to file an assignment after theapplication is filed. Accordingly, forEFS–Web submissions, all assignmentssubmitted on filing of the application orlater submitted will be made of recordin the application (entered into theImage File Wrapper (IFW)), and will notbe forwarded to the AssignmentRecordation Branch for recordation bythe Office. Thus, an assignment must besubmitted to the AssignmentRecordation Branch in order to complywith § 1.63(e)(1)(ii). If an applicant filesthe assignment-statement for recordingvia EPAS and utilizes the check-box, theOffice will place a copy of theassignment-statement in the relatedapplication file.Section 1.63(f) provides that withrespect to an application naming onlyone inventor, any reference to theinventor’s oath or declaration in 37 CFRchapter I also includes a substitutestatement executed under § 1.64. Thus,any requirement in 37 CFR chapter I forthe inventor’s oath or declaration withrespect to an application naming onlyone inventor is met if an oath ordeclaration under § 1.63, an assignmentstatementunder § 1.63(e), or a substitutestatement under § 1.64 executed by orwith respect to the inventor is filed.Section 1.63(f) also provides that withrespect to an application naming morethan one inventor, any reference to theinventor’s oath or declaration in 37 CFRchapter I means the oaths, declarations,or substitute statements that have beencollectively executed by or with respectto all of the joint inventors, unlessotherwise clear from the context. Thus,any requirement in 37 CFR chapter I forthe inventor’s oath or declaration withrespect to an application naming morethan one inventor is met if an oath ordeclaration under § 1.63, an assignmentstatementunder § 1.63(e), or a substitutestatement under § 1.64 executed by orwith respect to each joint inventor isfiled.Section 1.63(g) provides that an oathor declaration under § 1.63, includingthe statement provided for in § 1.63(e),must be executed (i.e., signed) inaccordance either with § 1.66, or withan acknowledgment that any willfulfalse statement made in suchdeclaration or statement is punishableunder 18 U.S.C. 1001 by fine orimprisonment of not more than five (5)years, or both. See 35 U.S.C. 115(i). Theinventor’s oath or declaration must beexecuted (i.e., signed) by the inventor orthe joint inventors, unless the oath ordeclaration is a substitute statementunder § 1.64, which must be signed bythe party or parties making thestatement, or an assignment under§ 1.63(e), which must be signed by theindividual who is under the obligationof assignment of the patent application.35 U.S.C. 115(h)(1) provides that anyperson making a statement under thissection may at any time ‘‘withdraw,replace, or otherwise correct thestatement at any time.’’ Section 1.63(h)provides that an oath or declarationfiled at any time pursuant to 35 U.S.C.115(h)(1) will be placed in the filerecord of the application or patent, butmay not necessarily be reviewed by theOffice. Oaths or declarations submittedpursuant to 35 U.S.C. 115(h)(1) that arefiled prior to the mailing of a notice ofallowance in an application wouldcontinue to be reviewed by the Officefor compliance with 35 U.S.C. 115 andthe applicable regulations. Oaths ordeclarations submitted pursuant to 35U.S.C. 115(h)(1) that are filed after themailing of a notice of allowance in anapplication or patent would generallynot be reviewed by the Office. Section1.63(h) further provides that any requestfor correction of the named inventorshipmust comply with § 1.48 in anapplication and § 1.324 in a patent. Thisis a reminder that the mere submissionof an oath or declaration pursuant to 35U.S.C. 115(h)(1) will not operate tocorrect inventorship in compliance with§ 1.48 in an application and § 1.324 ina patent.The provisions in former § 1.63concerning the power of attorney in acontinuing application are nowcontained in § 1.32 and thecorrespondence address in a continuingapplication are now contained in§ 1.33(f).Section 1.64: Section 1.64 implementsthe substitute statement provisions of 35U.S.C. 115(d). The provisions of former§ 1.64 concerning who must execute anoath or declaration are now contained in§ 1.63 with respect to an oath,declaration, or assignment-statementunder § 1.63 and are now containedwithin § 1.64 with respect to who mayexecute a substitute statement.Section 1.64(a) provides that anapplicant under § 1.43, 1.45 or 1.46 mayexecute a substitute statement in lieu ofan oath or declaration under § 1.63 if theinventor is deceased, is under a legalincapacity, has refused to execute theoath or declaration under § 1.63, orcannot be found or reached afterVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00016 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6diligent effort. 35 U.S.C. 115(d) providesthat, in lieu of execution of an oath ordeclaration by an inventor, theapplicant for patent may provide asubstitute statement under thecircumstances described in 35 U.S.C.115(d)(2) and such additionalcircumstances as the Director specifiesby 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 mayprovide a substitute statement are thesituations where the inventor isdeceased, under legal incapacity, orcannot be found or reached afterdiligent effort, or is under an obligationto assign the invention but has refusedto execute the oath or declaration. See35 U.S.C. 115(d)(2).As discussed previously, 35 U.S.C.115(d)(1) provides that the applicant forpatent may provide a substitutestatement in lieu of execution of an oathor declaration by an inventor under 35U.S.C. 115(a) under such additionalcircumstances as the Director specifiesby regulation. The Office is permittingthe applicant to provide a substitutestatement in lieu of an oath ordeclaration whenever the inventor hasrefused to execute the oath ordeclaration, even if the inventor is notunder an obligation to assign theinvention. 35 U.S.C. 118 and § 1.46, asadopted in this final rule, provide thata person who otherwise showssufficient proprietary interest in thematter may make an application forpatent on behalf of and as agent for theinventor on proof of the pertinent factsand a showing that such action isappropriate to preserve the rights of theparties. Thus, § 1.64, as adopted in thisfinal rule, permits a person whootherwise shows sufficient proprietaryinterest in the matter to execute asubstitute statement in lieu of executionof an oath or declaration by the inventoror a joint inventor if the inventor or ajoint refuses to join in an application forpatent regardless of whether there is anobligation to assign. 35 U.S.C. 116(b)and § 1.45, as adopted in this final rule,provide that if a joint inventor refusesto join in an application for patent orcannot be found or reached afterdiligent effort, the application may bemade by the other inventor on behalf ofhimself and the omitted inventor. See35 U.S.C. 116(b). Thus, § 1.64, asadopted in this final rule, permitsanother joint inventor to execute asubstitute statement in lieu of executionof an oath or declaration by the omittedinventor if a joint inventor refuses tojoin in an application for patentregardless of whether there is anobligation to assign the invention. If the

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48791sroberts on DSK5SPTVN1PROD with RULESOffice does not permit the applicant toalso provide a substitute statement inlieu of an oath or declaration wheneverthe inventor or a joint inventor hasrefused to execute the oath ordeclaration (even if the inventor or jointinventor is not under an obligation toassign the invention), a person whootherwise shows sufficient proprietaryinterest in the matter who provides ashowing that such action is appropriateto preserve the rights of the parties, orthe remaining inventor or inventors,may be the applicant under either 35U.S.C. 118 or 116(b), respectively, butmay be precluded from providing asubstitute statement in lieu of an oath ordeclaration. This is consistent withexisting Office practice under which aperson who otherwise shows sufficientproprietary interest in the matter or theremaining inventor or inventors mayexecute the oath or declaration as theapplicant if all of the inventors haverefused to execute the oath ordeclaration.Section 1.64(b) provides that asubstitute statement under § 1.64 must:(1) comply with the requirements of§ 1.63(a), identifying the inventor orjoint inventor with respect to whom asubstitute statement in lieu of an oath ordeclaration is executed, and statingupon information and belief the factswhich such inventor is required to state;(2) identify the person executing thesubstitute statement and therelationship of such person to theinventor or joint inventor with respectto whom the substitute statement isexecuted, and unless such informationis supplied in an application data sheetin accordance with § 1.76, the residenceand mailing address of the personsigning the substitute statement; and (3)identify the circumstances permittingthe person to execute the substitutestatement in lieu of an oath ordeclaration under § 1.63, namelywhether the inventor is deceased, isunder a legal incapacity, cannot befound or reached after a diligent effortwas made, or has refused to execute theoath or declaration under § 1.63. Section1.64(b) also provides that, unless suchinformation is supplied in anapplication data sheet in accordancewith § 1.76, the substitute statementmust also identify: (1) each inventor byhis or her legal name; and (2) the lastknown mailing address where theinventor customarily receives mail, andlast known residence, if an inventorlives at a location which is differentfrom where the inventor customarilyreceives mail, for each inventor who isnot deceased or under a legalincapacity.Section 1.64(c) provides that a personmay not execute a substitute statementunder § 1.64 for an application unlessthat person has reviewed andunderstands the contents of theapplication, including the claims, and isaware of the duty to disclose to theOffice all information known to theperson to be material to patentability asdefined in § 1.56.Section 1.64(d) provides that anyreference to an inventor’s oath ordeclaration also includes a substitutestatement provided for in § 1.64.Section 1.64(e) provides that asubstitute statement under § 1.64 mustcontain an acknowledgment that anywillful false statement made in suchstatement is punishable under 18 U.S.C.1001 by fine or imprisonment of notmore than five (5) years, or both.Section 1.64(f) provides that anonsigning inventor or legalrepresentative may subsequently join inthe application by submitting an oath ordeclaration under § 1.63. Section 1.64(f)also provides that the submission of anoath or declaration by a nonsigninginventor or legal representative in anapplication filed under § 1.43, 1.45 or1.46 will not permit the nonsigninginventor or legal representative torevoke or grant a power of attorney.Section 1.66: Section 1.66 is amendedto eliminate the special provisions foroaths taken before an officer in acountry other than the United States.Section 1.67: Section 1.67 providesfor a supplemental inventor’s oath ordeclaration (which includes oaths,declarations, assignment-statementsunder § 1.63(e), and substitutestatements under § 1.64) under 35U.S.C. 115(h).Section 1.67(a) provides that theapplicant may submit an inventor’s oathor declaration meeting the requirementsof § 1.63, § 1.64, or § 1.162 to correct anydeficiencies or inaccuracies present inan earlier-filed inventor’s oath ordeclaration. See 35 U.S.C. 115(h)(1).Section 1.67(a) also provides thatdeficiencies or inaccuracies due to thefailure to meet the requirements of§ 1.63(b) in an oath or declaration maybe corrected with an application datasheet in accordance with § 1.76, exceptthat any correction of inventorship mustbe pursuant to § 1.48.Section 1.67(b) provides that asupplemental inventor’s oath ordeclaration under § 1.67 must beexecuted by the person whoseinventor’s oath or declaration is beingwithdrawn, replaced, or otherwisecorrected.Section 1.67(c) provides that theOffice will not require a person who hasexecuted an oath or declaration inVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00017 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6compliance with 35 U.S.C. 115 and§ 1.63 or § 1.162 for an application toprovide an additional inventor’s oath ordeclaration for the application. See 35U.S.C. 115(h)(2).Section 1.67(d) contains the provisionof former § 1.67(b) that no new mattermay be introduced into anonprovisional application after itsfiling date even if an inventor’s oath ordeclaration is filed to correctdeficiencies or inaccuracies present inthe earlier-filed oath or declaration.Section 1.76: Section 1.76(a) isamended to clarify that an applicationdata sheet may be submitted in aprovisional application under 35 U.S.C.111(b), a nonprovisional applicationunder 35 U.S.C. 111(a), or a nationalstage application under 35 U.S.C. 371.Section 1.76(a) is also amended torequire that an application data sheetmust be submitted to claim priority toor the benefit of a prior-filed applicationunder 35 U.S.C. 119, 120, 121, or 365 forconsistency with the changes to §§ 1.55and 1.78. Including foreign priority anddomestic benefit claims in the Office’sApplication Data Sheet form (PTO/SB/14) can benefit applicants as the datacan be loaded directly into the Office’selectronic systems; thus ensuring thedata is accurately captured. The datawill only load directly into the Office’selectronic systems when the PTO/SB/14is submitted as an EFS–Web FillableForm, rather than a scanned portabledocument format (PDF) image submittedelectronically via EFS–Web. Section1.76(a) is also amended to provide thatthe provisions of § 1.76(c)(2) (discussedsubsequently) are an exception to therequirement that an application datasheet must contain all of the sectionheadings listed in § 1.76(b), with anyappropriate data for each sectionheading.Section 1.76(b)(1) is amended topertain to inventor information, ratherthan applicant information. Asdiscussed previously, the Office plans tocontinue to use the inventor’s name forapplication and patent identificationpurposes as inventor names tend toprovide a more distinct identificationthan assignee name. Section 1.76(b)(1)indicates that inventor informationincludes the legal name, residence, andmailing address of the inventor or eachjoint inventor.Section 1.76(b)(3) is amended toeliminate a suggested classification, byclass and subclass, and the TechnologyCenter, from the application informationportion of the application data sheet.This information is no longer utilized bythe Office in view of internal changesrelating to how applications areclassified.

sroberts on DSK5SPTVN1PROD with RULES48792 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and RegulationsSection 1.76(b)(5) is amended toprovide that domestic benefitinformation includes the applicationnumber, the filing date, the status(including patent number if available),and relationship of each application forwhich a benefit is claimed under 35U.S.C. 119(e), 120, 121, or 365(c).Section 1.76(b)(5) further provides thatproviding this information in theapplication data sheet constitutes thespecific reference required by 35 U.S.C.119(e) or 120, and § 1.78(a)(2) or§ 1.78(a)(5).Section 1.76(b)(7) is amended topertain to ‘‘applicant’’ rather than‘‘assignee’’ information. Section1.76(b)(7) provides that applicantinformation includes the name (eithernatural person or juristic entity) andaddress of the legal representative,assignee, person to whom the inventoris under an obligation to assign theinvention, or person who otherwiseshows sufficient proprietary interest inthe matter who is the applicant under§ 1.43 or 1.46. Thus, § 1.76(b)(7)provides for the situation in which theapplicant is a person other than theinventor under § 1.43 (legalrepresentative) or § 1.46 (assignee,person to whom the inventor is underan obligation to assign the invention, orperson who otherwise shows sufficientproprietary interest in the matter). Thissection may be left blank if theapplicant is the inventor or is theremaining joint inventor or inventors(§ 1.45).As discussed previously, § 1.46(b)provides that if an application is filedby the assignee, a person to whom theinventor is under an obligation to assignthe invention, or a person whootherwise shows sufficient proprietaryinterest in the matter, the applicationmust contain an application data sheetunder § 1.76 specifying the assignee,person to whom the inventor is underan obligation to assign the invention, orperson who otherwise shows sufficientproprietary interest in the matter in theapplicant information section. As alsodiscussed previously, § 1.46(c) providesthat any request to correct or update thename of the applicant, or change theapplicant, must include an applicationdata sheet under § 1.76 specifying theapplicant in the applicant informationsection. Section 1.76(b)(7) continues toprovide that providing assignmentinformation in the application datasheet does not substitute for compliancewith any requirement of 37 CFR part 3to have an assignment recorded by theOffice.Section 1.76(c) is amended toeliminate the distinction between anapplication data sheet and asupplemental application data sheet. Anapplication data sheet provided onfiling and an application data sheetsubmitted after the filing date of theapplication are both considered anapplication data sheet.Section 1.76(c)(1) provides thatinformation in a previously submittedapplication data sheet, the inventor’soath or declaration under § 1.63, § 1.64,or § 1.67, or otherwise of record, may becorrected or updated until payment ofthe issue fee by a new application datasheet providing corrected or updatedinformation, except that inventorshipchanges must comply with therequirements of § 1.48, foreign priorityand domestic benefit informationchanges must comply with §§ 1.55 and1.78, and correspondence addresschanges must comply with § 1.33(a).Section 1.76(c)(2) provides that anapplication data sheet providingcorrected or updated information mayinclude all of the sections listed in§ 1.76(b) or only those sectionscontaining changed or updatedinformation. Section 1.76(c)(2) furtherprovides that the application data sheetmust include the section headings listedin § 1.76(b) for each section included inthe application data sheet, and mustidentify the information that is beingchanged, with underlining forinsertions, and strike-through orbrackets for text removed, except thatidentification of information beingchanged is not required for anapplication data sheet included with aninitial submission under 35 U.S.C. 371.Section 1.76(d) governs the situationin which there are inconsistenciesbetween the application data sheet andother documents.Section 1.76(d)(1) provides that themost recent submission will govern(control) with respect to inconsistenciesas between the information provided inan application data sheet, a designationof a correspondence address, or by theinventor’s oath or declaration, exceptthat: (1) the most recent application datasheet will govern with respect to foreignpriority (§ 1.55) or domestic benefit(§ 1.78) claims; and (2) the naming ofthe inventorship is governed by § 1.41and changes to inventorship or thenames of the inventors is governed by§ 1.48. Section 1.76(d)(1) no longerreferences ‘‘an amendment to thespecification’’ as governing with respectto inconsistencies in view of thechanges to § 1.78.Section 1.76(d)(2) provides that theinformation in the application datasheet will govern when the inconsistentinformation is supplied at the same timeby a designation of correspondenceVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00018 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6address or the inventor’s oath ordeclaration.Section 1.76(d)(3) provides that theOffice will capture bibliographicinformation from the application datasheet. Section 1.76(d)(3) furtherprovides that the Office will generallynot review the inventor’s oath ordeclaration to determine if thebibliographic information containedtherein is consistent with thebibliographic information provided inan application data sheet. Section1.76(d)(3) further provides that incorrectbibliographic information contained inan application data sheet may becorrected as provided in § 1.76(c)(1).Section 1.76(e) provides that anapplication data sheet must be signed incompliance with § 1.33(b). Section1.76(e) further provides that anunsigned application data sheet will betreated only as a transmittal letter. Thus,an unsigned application data sheet willnot be effective to provide the name ofthe inventor for any invention claimedin the application (§ 1.41(b)), to make aclaim to priority of a foreign application(§§ 1.55(a)(1)(i), (c) and (d)(1)(ii)), ormake a claim to the benefit of a priorfileddomestic application(§§ 1.78(a)(2)(iii) and (a)(5)(iii)).The Office published a notice inMarch of 2008 indicating that therequirement under § 1.14(h)(2) that thewritten authority must be submitted ona separate document is waived in theevent the applicant files a properlyexecuted oath or declaration (e.g., themodified Form PTO/SB/01) with theAuthorization to Permit Access toApplication by Participating Offices.See Enhancement of Priority DocumentExchange Program and USPTODeclaration Form, 1328 Off. Gaz. Pat.Office 90, 91 (Mar. 11, 2008). In view ofthe changes to §§ 1.63 and 1.76 in thisfinal rule, the Office is now providingthat the requirement under § 1.14(h)(2)that the written authority must besubmitted on a separate document is notapplicable if the applicant files aproperly executed application datasheet (e.g., the modified Form PTO/SB/14) with the Authorization to PermitAccess to Application by ParticipatingOfficesSection 1.77: Section 1.77(a)(6) isamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.78: Section 1.78(a)(2)(iii) isamended to provide that the reference tothe prior-filed application that isrequired for benefit claim to a prior-filednonprovisional application orinternational application designatingthe U.S. by a nonprovisional applicationmust be in the application data sheet.

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48793sroberts on DSK5SPTVN1PROD with RULESSections 1.78(a)(5)(iii) is amended toprovide that the reference requirementfor a benefit claim to a prior-filedprovisional application by anonprovisional application must be inthe application data sheet.Providing this information in theapplication data sheet constitutes thespecific reference required by 35 U.S.C.119(e) or 120. The patent statuterequires that a claim to the benefit of(specific reference to) a provisionalapplication (35 U.S.C. 119(e)(1)) ornonprovisional application (35 U.S.C.120) be in the application. Since theapplication data sheet (if provided) isconsidered part of the application, thespecific reference to an earlier filedprovisional or nonprovisionalapplication in the application data sheetmeets the ‘‘specific reference’’requirement of 35 U.S.C. 119(e)(1) or120.Providing this information in a singlelocation will also facilitate moreefficient processing of applications, asthe Office will only have to look at onelocation for the benefit claim and themost recent application data sheet willgovern. Formerly, the Office had to lookat the specification, amendments to thespecification and the application datasheet if provided to determine thebenefit claim. When applicantsprovided inconsistent informationamong the three sources, the Office hadto then determine which benefit claimgoverns in accordance with the rule.Providing this information in a singlelocation will facilitate review of patentsand patent application publications,because applications frequently providea benefit and/or foreign priority claim inthe first sentence(s) of the specification,which is amended by an applicationdata sheet that includes a differentbenefit or foreign priority claim, andthus the benefit claim and/or foreignpriority information contained on thefront page of the patent or patentapplication publication is different fromthe benefit claim and/or foreign priorityclaim included in the first sentence(s) ofthe specification. While the benefit and/or foreign priority claim on the frontpage of the patent or patent applicationpublication is usually correct, anyone(including an examiner, a practitioner orthe public) reviewing the patent orpatent application publication mustreview the file history of theapplication. Since most applications arefiled with an application data sheet,requiring benefit and/or foreign priorityclaims be included in the applicationdata sheet will not require mostpractitioners to change their practice.Section 1.78(a)(5)(iv) is amended todelete the reference to ‘‘an amendment’’and to delete the word ‘‘Supplemental.’’Section 1.78(a)(5)(iv) is also amended tochange thre phrase ‘‘withdrawing thebenefit claim’’ to ‘‘eliminating thereference under this paragraph to theprior-filed provisional application.’’Section 1.78(c) is amended to change‘‘assignee’’ to ‘‘applicant.’’ This changeis for consistency with the change inpractice concerning who is theapplicant for patent in § 1.42.Section 1.81: Section 1.81(a) isamended to change ‘‘his or herinvention’’ to ‘‘the invention.’’ Thischange is for consistency with thechange in practice concerning who isthe applicant for patent in § 1.42.Section 1.105: Section § 1.105 isamended to remove § 1.105(a)(2) (andredesignate §§ 1.105(a)(3) and (a)(4) as§§ 1.105(a)(2) and (a)(3), respectively) asan assignee that has asserted its right toprosecute the application is theapplicant. See § 1.46.Section 1.131: Section 1.131(a) isamended to change ‘‘the inventor of thesubject matter of the rejected claim, theowner of the patent underreexamination, or the party qualifiedunder §§ 1.42, 1.43, or 1.47’’ to ‘‘theapplicant or patent owner.’’ This changeis for consistency with the change inpractice concerning who is theapplicant for patent in § 1.42.Section 1.136: Section 1.136(c)(1) isamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.153: Section 1.153(b) isamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.154: Section 1.154(a)(6) isamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.162: Section 1.162 isamended to state that the inventornamed for a plant patent applicationmust be the person who has invented ordiscovered and asexually reproducedthe new and distinct variety of plant forwhich a patent is sought. This changefrom ‘‘applicant’’ to ‘‘inventor’’ is forconsistency with the change in practiceconcerning who is the applicant forpatent in § 1.42. Section 1.162 is alsoamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.163: Section 1.163(b)(6) isamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.172: Section 1.172(a) isrevised to state that the reissueapplicant is the original patentee, or thecurrent patent owner if there has beenan assignment. Section 1.172(a) requiresVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00019 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6that a reissue application beaccompanied by the written consent ofall assignees, if any, currently owningan undivided interest in the patent, andthat all assignees consenting to thereissue must establish their ownershipin the patent by filing in the reissueapplication a submission in accordancewith the provisions of § 3.73(c). Section1.172(b) provides that a reissue will begranted to the original patentee, hislegal representatives or assigns as theinterest may appear.Section 1.175: Section 1.175(a)provides that the inventor’s oath ordeclaration for a reissue application, inaddition to complying with therequirements of § 1.63, § 1.64, or§ 1.67,must also specifically identify at leastone error pursuant to 35 U.S.C. 251being relied upon as the basis for reissueand state that the applicant believes theoriginal patent to be wholly or partlyinoperative or invalid by reason of adefective specification or drawing, or byreason of the patentee claiming more orless than the patentee had the right toclaim in the patent. Examples of propererror statements are discussed in MPEP§ 1414, II. The reissue oath ordeclaration may identify more than onespecific error that forms the basis of thereissue, but at least one error must beidentified.Section 1.175(b) provides that if thereissue application seeks to enlarge thescope of the claims of the patent (a basisfor the reissue is the patentee claimingless than the patentee had the right toclaim in the patent), the inventor’s oathor declaration for a reissue applicationmust identify a claim that theapplication seeks to broaden.Section 1.175(b) indicates that a claimis a broadened claim if the claim isbroadened in any respect for purposesof 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.2d729, 730 (CCPA 1960), and In re Rogoff,261 F.2d 601, 603 (CCPA 1958). Therequirement that a claim broadened inany respect be treated as a broadenedclaim is important to determine whocan sign the reissue oath or declaration.It also is important because a reissueapplication that broadens the scope ofthe original patent may only be filedwithin two years from the grant of theoriginal patent. See 35 U.S.C. 251(d).Section 1.175(c) provides that theinventor, or each individual who is ajoint inventor of a claimed invention, ina reissue application must execute anoath or declaration for the reissueapplication, except as provided for in§ 1.64, and except that the inventor’soath or declaration for a reissueapplication may be signed by the

sroberts on DSK5SPTVN1PROD with RULES48794 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationsassignee of the entire interest if: (1) Theapplication does not seek to enlarge thescope of the claims of the originalpatent; or (2) the application for theoriginal patent was filed under § 1.46 bythe assignee of the entire interest. See 35U.S.C. 251(c).Section 1.175(d) provides that whereall errors previously identified in theinventor’s oath or declaration for areissue application pursuant to§ 1.175(a) are no longer being reliedupon as the basis for reissue, theapplicant must identify an error beingrelied upon as the basis for reissue.Thus, a supplemental reissue oath ordeclaration is no longer required whereall errors previously identified in theinventor’s oath or declaration for areissue application pursuant to§ 1.175(a) are no longer being reliedupon as the basis for reissue. However,the applicant must still identify an errorbeing relied upon as the basis for reissue(e.g., in the remarks of an amendment).A new reissue oath or declaration wouldbe still required if the reissue oath ordeclaration pursuant to § 1.175(a) failsto identify any error or fails to identifyat least one error of the type that wouldsupport a reissue. See MPEP § 1402.Section 1.175 does not contain arequirement for supplemental reissueoaths or declarations in view of thechange to 35 U.S.C. 251 in section 20 ofthe AIA (i.e., removal of the ‘‘withoutany deceptive intention’’ provision insection 20 of the AIA).Section 1.175(e) provides that theinventor’s oath or declaration for areissue application required by§ 1.175(a) may be submitted under theprovisions of § 1.53(f), except that theprovisions of § 1.53(f)(3) do not apply toa reissue application. Thus, theinventor’s oath or declaration for areissue application must be presentbefore a reissue application will beexamined.Section 1.175(f) provides that therequirement for the inventor’s oath ordeclaration for a continuing reissueapplication that claims the benefitunder 35 U.S.C. 120, 121, or 365(c) incompliance with § 1.78 of an earlierfiledreissue application may besatisfied by a copy of the inventor’s oathor declaration from the earlier-filedreissue application, provided that: (1)The inventor, or each individual who isa joint inventor of a claimed invention,in the reissue application executed aninventor’s oath or declaration for theearlier-filed reissue application, exceptas provided for in § 1.64; (2) thecontinuing reissue application does notseek to enlarge the scope of the claimsof the original patent; or (3) theapplication for the original patent wasfiled under § 1.46 by the assignee of theentire interest. Thus, the requirementfor the inventor’s oath or declaration fora continuing reissue application may besatisfied by a copy of the inventor’s oathor declaration from the earlier-filedreissue application except when all ofthe following conditions exist: (1) Theinventor’s oath or declaration for theearlier-filed reissue application wasexecuted by the patent owner and notby or with respect to the inventor, (2)the continuing reissue application seeksto enlarge the scope of the claims of theoriginal patent; and (3) the applicationfor the original patent was not filedunder § 1.46 by the assignee of theentire interest. Section 1.175(f) furtherprovides that if all errors identified inthe inventor’s oath or declaration fromthe earlier-filed reissue application areno longer being relied upon as the basisfor reissue, the applicant must identifyan error being relied upon as the basisfor reissue.Section 1.175(g) provides that an oathor declaration filed at any time pursuantto 35 U.S.C. 115(h)(1), will be placed inthe file record of the reissue application,but may not necessarily be reviewed bythe Office.Section 1.211: Section 1.211(c) isamended to no longer require ‘‘anexecuted oath or declaration’’ forpublication of the application. Section1.211(c) is also amended to state that theOffice may delay publishing anyapplication until it includes ‘‘theinventor’s oath or declaration orapplication data sheet containing theinformation specified in § 1.63(b)’’ andto no longer reference a petition under§ 1.47. These changes are due to thechange to §§ 1.53 and 1.495 to allowapplicants to postpone filing theinventor’s oath or declaration until theapplication is otherwise in condition forallowance.Section 1.215: Section 1.215(a) isamended to replace ‘‘executed oath ordeclaration’’ with ‘‘application datasheet and/or the inventor’s oath ordeclaration.’’ This change is due to thechange to §§ 1.53 and 1.495 to allowapplicants to postpone filing theinventor’s oath or declaration until theapplication is otherwise in condition forallowance.Section 1.215(b) is amended to statethat the patent application publicationwill include the name of the assignee,person to whom the inventor is underan obligation to assign the invention, orperson who otherwise shows sufficientproprietary interest in the matter if thatinformation is provided in theapplication data sheet in an applicationfiled under § 1.46.VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00020 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6Section 1.215(c) is amended toreplace ‘‘oath or declaration’’ with‘‘application data sheet and/or theinventor’s oath or declaration.’’ Thischange is due to the change to §§ 1.53and 1.495 to allow applicants topostpone filing the inventor’s oath ordeclaration until the application isotherwise in condition for allowance.Section 1.321: Section 1.321(b) isamended to provide that a terminaldisclaimer must be signed by theapplicant or an attorney or agent ofrecord and state the present extent ofapplicant’s ownership interest in thepatent to be granted.Section 1.324: Section 1.324 isamended to no longer include a‘‘without deceptive intention’’requirement (as this requirement hasbeen eliminated from 35 U.S.C. 256 insection 20 of the AIA). Section 1.324(a)provides that whenever through error aperson is named in an issued patent asthe inventor, or an inventor is notnamed in an issued patent, the Director,pursuant to 35 U.S.C. 256, may, onapplication of all the parties andassignees, or on order of a court beforewhich such matter is called in question,issue a certificate naming only theactual inventor or inventors. See 35U.S.C. 256.Section 1.324(b) provides that anyrequest to correct inventorship of apatent pursuant to 1.324(a) must beaccompanied by: (1) A statement fromeach person who is being added as aninventor and each person who iscurrently named as an inventor eitheragreeing to the change of inventorshipor stating that he or she has nodisagreement in regard to the requestedchange; (2) a statement from allassignees of the parties submitting astatement under 1.324(b)(1) agreeing tothe change of inventorship in the patent,which statement must comply with therequirements of § 3.73(c); and (3) the feeset forth in § 1.20(b).Section 1.324(c) provides a crossreference to § 1.48 for correction ofinventorship in an application.Section 1.324(d) provides that in aninterference under part 41, subpart D, ofthis title, a request for correction ofinventorship in a patent must be in theform of a motion under § 41.121(a)(2) ofthis title, and that in a contested caseunder part 42, subpart D, of this title, arequest for correction of inventorship ina patent must be in the form of a motionunder § 42.22 of this title. Section1.324(d) further provides that themotion under § 41.121(a)(2) or 42.22 ofthis title must comply with therequirements of § 1.324.Section 1.414: Section 1.414(c)(2) isamended to replace ‘‘[a]ccepting for

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48795sroberts on DSK5SPTVN1PROD with RULESnational stage examination internationalapplications which satisfy therequirements of 35 U.S.C. 371’’ with‘‘[n]ational stage processing forinternational applications entering thenational stage under 35 U.S.C. 371.’’ Asdiscussed previously, an internationalapplication does not satisfy therequirements of 35 U.S.C. 371 until theinventor’s oath or declaration has beenfiled. Thus, under the changes toinventor’s oath or declaration practicein this final rule, the Office mustprocess and conduct nationalexamination of internationalapplications before they satisfy therequirements of 35 U.S.C. 371.Section 1.421: Section 1.421(b) isamended to provide that ‘‘[a]lthough theUnited States Receiving Office willaccept international applications filedby any applicant who is a resident ornational of the U.S. for internationalprocessing, for the purposes of thedesignation of the U.S., an internationalapplication will be accepted by thePatent and Trademark Office for thenational stage only if the applicant isthe inventor or other person as providedin § 1.422 or § 1.424.’’ Section 1.421(b)continues to provide that joint inventorsmust jointly apply for an internationalapplication.Section 1.421 is amended to deletethe provision of former § 1.421(c) thatfor purposes of designations other thanthe U.S., international applications maybe filed by the assignee or owner. Thisprovision is deleted in view of thechanges to 35 U.S.C. 118 under the AIA.Sections 1.421(c), (d), and (e) containthe provisions of former §§ 1.421(d), (e),and (f), respectively.Section 1.421(f) contains theprovisions of former § 1.421(g), exceptfor the provision that the submission ofa separate power of attorney may beexcused upon the request of anotherapplicant where one or more inventorscannot be found or reached afterdiligent effort, and that such a requestmust be accompanied by a statementexplaining to the satisfaction of theDirector the lack of the signatureconcerned.Section 1.422: Section 1.422 isamended to provide that if an inventoris deceased or under legal incapacity,the legal representative of the inventormay be an applicant in an internationalapplication which designates the UnitedStates.Section 1.423: Section 1.423 isremoved and reserved as its provisionsare now in § 1.422.Section 1.424: Section 1.424 is addedto provide for an assignee, obligatedassignee, or person who otherwiseshows sufficient proprietary interest inthe matter as the applicant under 35U.S.C. 118 in an internationalapplication.Section 1.424(a) provides that aperson to whom the inventor hasassigned or is under an obligation toassign the invention may be anapplicant in an international applicationwhich designates the U.S. Section1.424(a) also provides that a person whootherwise shows sufficient proprietaryinterest in the matter may be anapplicant in an international applicationwhich designates the U.S. on proof ofthe pertinent facts and a showing thatsuch action is appropriate to preservethe rights of the parties.Section 1.424(b) provides that neitherany showing required under § 1.424(a)nor documentary evidence of ownershipor proprietary interest will be requiredor considered by the Office in theinternational stage, but such showingswill be required in the national stage inaccordance with the conditions andrequirements of § 1.46.Section 1.431: Section 1.431(b)(3)(iii)is amended to reference §§ 1.421, 1.422and 1.424 for consistency with theremoval of § 1.423 and the addition of§ 1.424.Section 1.491: Section 1.491(b) isamended by stating that an internationalapplication enters the national stagewhen the applicant has filed ‘‘thedocuments and fees required by 35U.S.C. 371(c)(1) and (c)(2) within theperiod set in § 1.495’’ rather than ‘‘thedocuments and fees required by 35U.S.C. 371(c) within the period set in§ 1.495.’’ 35 U.S.C. 371 provides that‘‘[a]fter an international application hasentered the national stage, no patentmay be granted or refused thereonbefore the expiration of the applicabletime limit under [PCT Article 28 or 41],except with the express consent of theapplicant.’’ See 35 U.S.C. 371(e). 35U.S.C. 371, however, does not definewhen an international applicationenters the national stage. The Officeformerly defined when an internationalapplication enters the national stage aswhen the applicant files the documentsand fees required by 35 U.S.C. 371(c)within the period set in § 1.495, whichmeans that an international applicationwould not enter the national stage untilthe applicant files the inventor’s oath ordeclaration. See 35 U.S.C. 371(c)(4). Asthe Office is changing inventor’s oath ordeclaration practice to allow applicantsto postpone filing the inventor’s oath ordeclaration until the application isotherwise in condition for allowance,the Office would be examininginternational applications prior tonational stage entry under the definitionVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00021 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6of national stage entry provided informer § 1.491(b).Section 1.491(c) is added to state thatan international application fulfills therequirements of 35 U.S.C. 371 when allapplicable requirements of 35 U.S.C.371, including commencement under 35U.S.C. 371(b) or (f), have been satisfied.As discussed previously, the fourteenmonthtime frame in 35 U.S.C.154(b)(1)(A)(i)(II) for issuing an Officeaction under 35 U.S.C. 132 or notice ofallowance under 35 U.S.C. 151 ismeasured from ‘‘the date on which aninternational application fulfilled therequirements of section 371 of this title’’(not the date of commencement ofnational stage processing or entry intothe national stage). An internationalapplication does not fulfill therequirements of 35 U.S.C. 371 until theapplicant files the inventor’s oath ordeclaration. See 35 U.S.C. 371(c)(4) andMPEP § 1893.03(b). Thus, § 1.491(c) isadded as a reminder to PCT applicantsthat an international application fulfillsthe requirements of 35 U.S.C. 371 onlywhen all applicable requirements of 35U.S.C. 371 have been satisfied.Section 1.492: Section 1.492(h) isamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.495: Section 1.495(a) isamended to remove the sentence thatstated ‘‘international applications forwhich the requirements of § 1.495 aretimely fulfilled will enter the nationalstage and obtain an examination as tothe patentability of the invention in theUnited States of America’’ as thesentence was confusing.Section 1.495(c)(1)(ii) is amended torefer to ‘‘the inventor’s oath ordeclaration.’’ See previous discussion of§ 1.16(f).Section 1.495(c)(2) provides that anotice under § 1.495(c)(1) will set a timeperiod within which applicant mustprovide any omitted translation, searchfee set forth in § 1.492(b), examinationfee set forth in § 1.492(c), and anyapplication size fee required by§ 1.492(j) in order to avoid abandonmentof the application. Section 1.495(c)(3)(discussed subsequently) sets forth thetime period for filing the inventor’s oathor declaration and provides theconditions under which an applicantmay postpone filing the inventor’s oathor declaration until the application isotherwise in condition for allowance.Section 1.495(c)(3) sets forth the timeperiod for filing the inventor’s oath ordeclaration and provides the conditionsunder which an applicant may postponefiling the inventor’s oath or declarationuntil the application is otherwise incondition for allowance. Section

sroberts on DSK5SPTVN1PROD with RULES48796 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations1.495(c)(3) specifically provides that theinventor’s oath or declaration must alsobe filed within the period specified in§ 1.495(c)(2), except that the filing of theinventor’s oath or declaration may bepostponed until the application isotherwise in condition for allowanceunder the conditions specified in§§ 1.495(c)(3)(i) through (c)(3)(iii).Section 1.495(c)(3)(i) provides that theapplication must contain an applicationdata sheet in accordance with § 1.76filed prior to the expiration of the timeperiod set in any notice under§ 1.495(c)(1) identifying: (1) Eachinventor by his or her legal name; and(2) a mailing address where the inventorcustomarily receives mail, andresidence, if an inventor lives at alocation which is different from wherethe inventor customarily receives mail,for each inventor. Section 1.495(c)(3)(ii)provides that the applicant must file anoath or declaration in compliance with§ 1.63, or substitute statement incompliance with § 1.64, executed by orwith respect to each actual inventor nolater than the expiration of the timeperiod set in the ‘‘Notice ofAllowability’’ to avoid abandonment,when the applicant is notified in a‘‘Notice of Allowability’’ that anapplication is otherwise in condition forallowance. The time period set in a‘‘Notice of Allowability’’ is notextendable. See § 1.136(c). The Officemay dispense with the notice providedfor in § 1.495(c)(1) if an oath ordeclaration under § 1.63, or substitutestatement under § 1.64, executed by orwith respect to each actual inventor hasbeen filed before the application is incondition for allowance.Under former practice, the Officeissued a Notification of MissingRequirements if the basic national feeand copy of the internationalapplication (if required under§ 1.495(b)(1)) have been received by theexpiration of thirty months from thepriority date, but the inventor’s oath ordeclaration has not been filed. If theOffice issued a Notification of MissingRequirements, the applicant was given atime period (the later of two monthsfrom the date of the notice or thirty-twomonths from the priority date) withinwhich to file the inventor’s oath ordeclaration and pay the surchargerequired by § 1.492(h) to avoidabandonment. See MPEP § 1893.01(e).The Office is modifying this practicesuch that if a signed application datasheet providing the informationrequired by § 1.495(c)(3)(i) has beenreceived, but not the inventor’s oath ordeclaration, the Office will not issue aNotification of Missing Requirementsrequiring the applicant to file theinventor’s oath or declaration. Thischange will not affect the practice ofissuing a Notification of MissingRequirements if another requirement ismissing (e.g., an English translation ofthe international application requiredunder § 1.495(c) or the surchargerequired by § 1.492(h) for filing theinventor’s oath or declaration after thedate of commencement). If the basicnational fee and required copy of theinternational application have beenreceived by the expiration of thirtymonths from the priority date, butneither the inventor’s oath ordeclaration as required under § 1.497nor a signed application data sheetproviding the information required by§ 1.495(c)(3)(i) have been received, theOffice will issue a Notification ofMissing Requirements giving theapplicant a time period (at least twomonths) within which to file theinventor’s oath or declaration (or signedapplication data sheet providing theinformation required by § 1.495(c)(3)(i))and surcharge required by § 1.492(h)(unless previously paid) to avoidabandonment. In this situation, theinventor’s oath or declaration will notbe required within the period for replyto the Notification of MissingRequirements if the applicant providesa signed application data sheetproviding the information required by§ 1.495(c)(3)(i) within the period forreply to the Notification of MissingRequirements. The surcharge requiredby § 1.492(h), and any other itemrequired by the Notification, however,must be filed within the period for replyto the Notification of MissingRequirements to avoid abandonment.If an application is in condition forallowance and includes an oath ordeclaration in compliance with § 1.63,or substitute statement in compliancewith § 1.64, executed by or with respectto each actual inventor, the Office willissue a ‘‘Notice of Allowability’’ (PTOL–37) and a ‘‘Notice of Allowance andFee(s) Due’’ (PTOL–85). If anapplication is in condition forallowance but does not include an oathor declaration in compliance with§ 1.63, or substitute statement incompliance with § 1.64, executed by orwith respect to each actual inventor, theOffice will issue a ‘‘Notice ofAllowability’’ (PTOL–37) (but not a‘‘Notice of Allowance and Fee(s) Due’’(PTOL–85)) giving the applicant threemonths to file an oath or declaration incompliance with § 1.63, or substitutestatement in compliance with § 1.64,executed by or with respect to eachactual inventor, to avoid abandonment.VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00022 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6This three-month time period is notextendable under § 1.136(a). The‘‘Notice of Allowance’’ (PTOL–85) willnot be issued until the applicationincludes an oath or declaration incompliance with § 1.63, or substitutestatement in compliance with § 1.64,executed by or with respect to eachactual inventor.Section 1.495(c)(3)(iii) provides thatan international application in whichthe basic national fee under 35 U.S.C.41(a)(1)(F) has been paid and for whichan application data sheet in accordancewith § 1.76 has been filed may betreated as complying with 35 U.S.C. 371for purposes of eighteen-monthpublication under 35 U.S.C. 122(b) and§ 1.211 et seq. Section 4508 of theAmerican Inventors Protection Act of1999 provides that its eighteen-monthpublication provisions apply toapplications (other than for a designpatent) filed under 35 U.S.C. 111(a) onor after November 29, 2000, and toapplications in compliance with 35U.S.C. 371 that resulted frominternational applications filed under 35U.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, aninternational application is not incompliance with 35 U.S.C. 371 until theapplicant files the inventor’s oath ordeclaration. See 35 U.S.C. 371(c)(4).Thus, this provision permits the Officeto treat an international application inwhich the basic national fee under 35U.S.C. 41(a)(1)(F) has been paid and forwhich an application data sheet inaccordance with § 1.76 has been filed ascomplying with 35 U.S.C. 371 forpurposes of eighteen-month publication.There is a distinction between treatingan international application without theinventor’s oath or declaration ascomplying with 35 U.S.C. 371 forpurposes of eighteen-month publicationand treating an international applicationwithout the inventor’s oath ordeclaration as fulfilling therequirements of 35 U.S.C. 371 for patentterm adjustment purposes. The PCTprovides for eighteen-month publication(PCT Article 21) and thus thepublication by the Office of aninternational application that is incompliance with 35 U.S.C. 371 is arepublication of the application. SeeChanges to Implement Eighteen-MonthPublication of Patent Applications, 65FR 57021, 57045 (Sept. 20, 2000)(comment 47 and response). Patent termadjustment, however, has an impact onthe rights of third parties to theapplication process (the public). See 35U.S.C. 282(c) (provides a defense based

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48797sroberts on DSK5SPTVN1PROD with RULESupon invalidity of an extension under35 U.S.C. 154(b)).Sections 1.495(c)(4) and (c)(5) containthe provisions of former § 1.495(c)(3)and (c)(4).Section 1.495(g) provides that if thedocuments and fees contain conflictingindications as between an applicationunder 35 U.S.C. 111 and a submissionto enter the national stage under 35U.S.C. 371, the documents and fees willbe treated as a submission to enter thenational stage under 35 U.S.C. 371. It isOffice experience that, in most cases,documents and fees that contain suchconflicting indications were intended assubmissions under 35 U.S.C. 371.Section 1.495(h) is amended to deletethe provision that if the requirements of§ 1.495(b) are complied with withinthirty months from the priority date, buteither any required translation of theinternational application or the oath ordeclaration are not timely filed, aninternational application will becomeabandoned as to the U.S. uponexpiration of the time period setpursuant to § 1.495(c).Section 1.496: Section 1.496 isamended to provide that national stageapplications having paid therein thesearch fee as set forth in § 1.492(b)(1)and examination fee as set forth in§ 1.492(c)(1) may be amendedsubsequent to the date ofcommencement of national stageprocessing only to the extent necessaryto eliminate objections as to form or tocancel rejected claims. Section 1.496also provides that such national stageapplications will be advanced out ofturn for examination. Section 1.496 isalso amended to eliminate the languageconcerning when internationalapplications are otherwise taken up forexamination as relating to anunnecessary internal Office instruction.Section 1.497: Section 1.497(a)provides that when an applicant of aninternational application desires toenter the national stage under 35 U.S.C.371 pursuant to § 1.495, and adeclaration in compliance with § 1.63has not been previously submitted inthe international application under PCTRule 4.17(iv) within the time limitsprovided for in PCT Rule 26ter.1, theapplicant must file the inventor’s oathor declaration. Section 1.497(a) furtherprovides that the inventor, or eachindividual who is a joint inventor of aclaimed invention, in an application forpatent must execute an oath ordeclaration in accordance with theconditions and requirements of § 1.63,except as provided for in § 1.64.Section 1.497(b) provides that an oathor declaration under § 1.63 will beaccepted as complying with 35 U.S.C.371(c)(4) if it complies with therequirements of §§ 1.63(a), (c) and (g).Section 1.497(b) provides that asubstitute statement under § 1.64 will beaccepted as complying with 35 U.S.C.371(c)(4) if it complies with therequirements of §§ 1.64(b)(1), (c) and (e)and identifies the person executing thesubstitute statement. Section 1.497(b)further provides that if a newlyexecuted inventor’s oath or declarationunder § 1.63 or substitute statementunder § 1.64 is not required pursuant to§ 1.63(d), submission of the copy of thepreviously executed oath, declaration,or substitute statement under§ 1.63(d)(1) is required to comply with35 U.S.C. 371(c)(4).Section 1.497(c) provides that if anoath or declaration under § 1.63, orsubstitute statement under § 1.64,meeting the requirements of § 1.497(b)does not also meet the requirements of§ 1.63 or 1.64, an oath, declaration,substitute statement, or application datasheet in accordance with § 1.76 tocomply with § 1.63 or § 1.64 will berequired.Section 1.530: Section 1.530(l)(1) isamended to eliminate the ‘‘withoutdeceptive intention’’ requirement (asthis requirement has been eliminatedfrom 35 U.S.C. 256 in section 20 of theAIA).Section 1.730: Section 1.730(b)(1) isamended to change the reference to‘‘3.73(b)’’ to ‘‘3.73(c)’’ for consistencywith the change to § 3.73.37 CFR Part 3Section 3.31: Section 3.31(h) isamended to provide that the assignmentcover sheet required by § 3.28 mustcontain a conspicuous indication of anintent to utilize the assignment as therequired oath or declaration under§ 1.63. This implements the provision of35 U.S.C. 115(e) which allows use of anassignment in lieu of an oath ordeclaration to meet the oath ordeclaration requirements of § 1.63. Seeprevious discussion of § 1.63(e).Section 3.71: Section 3.71(a) isamended to provide that one or moreassignees as defined in § 3.71(b) mayconduct prosecution of a national patentapplication as the applicant under§ 1.46 of this title, or conductprosecution of a supplementalexamination or reexaminationproceeding, to the exclusion of theinventor or previous applicant or patentowner. Section 3.71(a) formerlyprovided that an assignee may take overprosecution of a national patentapplication to the exclusion of theinventor or previous assignee. Asdiscussed previously, in view of thechanges to § 1.46 to implement theVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00023 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6provisions of 35 U.S.C. 118, an assigneewho files the application or takes overprosecution of a national patentapplication does so as the applicantunder § 1.46. Section 3.71(a) alsoincludes a reference to the supplementalexamination proceedings that have beenadded by section 12 of the AIA. Section3.71(a) also provides that conflictsbetween purported assignees arehandled in accordance with § 3.73(c)(3).Section 3.71(b) provides that theassignee(s) who may conduct either theprosecution of a national application forpatent as the applicant under § 1.46 ofthis title or a supplemental examinationor reexamination proceeding are: (1) asingle assignee who is the assignee ofthe entire right, title and interest in theapplication or patent, or (2) all partialassignees, or all partial assignees andinventors who have not assigned theirright, title and interest in theapplication or patent, who together ownthe entire right, title and interest in theapplication or patent. Section 3.71(b)provides that a partial assignee is anyassignee having less than the entireright, title and interest in theapplication or patent. Section 3.71(b)further provides that the word‘‘assignee’’ as used in this chaptermeans with respect to patent matters thesingle assignee of the entire right, titleand interest in the application or patentif there is such a single assignee, or allof the partial assignees, or all of thepartial assignees and inventors whohave not assigned their interest in theapplication or patent, who together ownthe entire right, title and interest in theapplication or patent.Section 3.71(c) provides that anassignee becomes of record as theapplicant in a national patentapplication under § 1.46 of this title,and in a supplemental examination orreexamination proceeding, by filing astatement in compliance with § 3.73(c)that is signed by a party who isauthorized to act on behalf of theassignee.Section 3.73: Section 3.73(a) provideswith respect to patents that the originalapplicant is presumed to be the ownerof an application for an original patent,and any patent that may issuetherefrom, unless there is anassignment. Thus, in view of thechanges to § 1.46 to implement theprovisions of 35 U.S.C. 118, thepresumption is now that the originalapplicant (and not the inventor(s)) is theowner of an application for an originalpatent. Section 3.73(a) continues toprovide with respect to trademarks thatthe original applicant is presumed to bethe owner of a trademark application or

48798 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESregistration, unless there is anassignment.Section 3.73(b) is amended to provideonly for trademark matters (patentmatters are provided for in § 3.73(c)).Section 3.73(b) provides that in order torequest or take action in a trademarkmatter, the assignee must establish itsownership of the trademark property of§ 3.73(a) to the satisfaction of theDirector, and that the establishment ofownership by the assignee may becombined with the paper that requestsor takes the action. Section 3.73(b)further provides that ownership isestablished by submitting to the Officea signed statement identifying theassignee, accompanied by either: (1)documentary evidence of a chain of titlefrom the original owner to the assignee(e.g., copy of an executed assignment),which documents submitted to establishownership may be required to berecorded pursuant to § 3.11 in theassignment records of the Office as acondition to permitting the assignee totake action in a matter pending beforethe Office; or (2) a statement specifyingwhere documentary evidence of a chainof title from the original owner to theassignee is recorded in the assignmentrecords of the Office (e.g., reel and framenumber).Section 3.73(c) provides that in orderto request or take action in a patentmatter, an assignee who is not theoriginal applicant must establish itsownership of the patent property of§ 3.73(a) to the satisfaction of theDirector, and that the establishment ofownership by the assignee may becombined with the paper that requestsor takes the action. Section 3.73(c)further provides that ownership isestablished by submitting to the Officea signed statement identifying theassignee, accompanied by either: (1)Documentary evidence of a chain of titlefrom the original owner to the assignee(e.g., copy of an executed assignment),and that the submission of thedocumentary evidence must beaccompanied by a statement affirmingthat the documentary evidence of thechain of title from the original owner tothe assignee was or concurrently isbeing submitted for recordationpursuant to § 3.11; or (2) a statementspecifying where documentary evidenceof a chain of title from the originalowner to the assignee is recorded in theassignment records of the Office (e.g.,reel and frame number).Section 3.73(c)(2) provides that if thesubmission is by an assignee of less thanthe entire right, title and interest (e.g.,more than one assignee exists), theOffice may refuse to accept thesubmission as an establishment ofownership unless: (1) Each assigneeestablishes the extent (by percentage) ofits ownership interest, so as to accountfor the entire right, title and interest inthe application or patent by all partiesincluding inventors; or (2) each assigneesubmits a statement identifying theparties including inventors whotogether own the entire right, title andinterest and stating that all theidentified parties own the entire right,title and interest.Section 3.73(c)(3) provides that if twoor more purported assignees fileconflicting statements under§ 3.73(c)(1), the Director will determinewhich, if any, purported assignee willbe permitted to control prosecution ofthe application. This provision sets outthe Office’s practice for treating two ormore conflicting statements under§ 3.73(c), currently discussed in MPEP§ 324, IX.Section 3.73(d) provides that thesubmission establishing ownershipunder § 3.73(b) (for trademark matters)or § 3.73(c) (for patent matters) mustshow that the person signing thesubmission is a person authorized to acton behalf of the assignee by: (1)Including a statement that the personsigning the submission is authorized toact on behalf of the assignee; (2) beingsigned by a person having apparentauthority to sign on behalf of theassignee; or (3) for patent matters only,being signed by a practitioner of record.37 CFR Part 5Section 5.25: Sections 5.25(a)(3)(iii)and 5.25(b) are amended to deleted the‘‘without deceptive intention’’ clausesfor consistency with the change to 35U.S.C. 184 in section 20 of the AIA.37 CFR Part 10Section 10.23: Section 10.23(c)(11) isremoved and reserved. Section 1.52(c)no longer prohibits changes to theapplication papers after execution of theinventor’s oath or declaration. Thus,§ 10.23 is amended to eliminate theclause concerning knowingly filing orcausing to be filed an applicationcontaining any material alteration madein the application papers after thesigning of the accompanying oath ordeclaration without identifying thealteration at the time of filing theapplication papers (except as permittedby § 1.52(c)) as conduct whichconstitutes a violation of § 10.23.37 CFR Part 41Section 41.9: Section 41.9(a) isamended to change the reference to‘‘3.73(b)’’ to ‘‘§§ 3.71 and 3.73.’’Comments and Responses toComments: As discussed previously, theVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00024 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6Office published a notice on January 6,2012, proposing to change the rules ofpractice to implement the inventor’soath or declaration provisions of section4 of the AIA. See Changes to Implementthe Inventor’s Oath or DeclarationProvisions of the Leahy-Smith AmericaInvents Act, 77 FR at 982–1003. TheOffice received thirty-one writtencomments from intellectual propertyorganizations, academia, industry, lawfirms, individual patent practitioners,and the general public in response tothis notice. The comments and theOffice’s responses to the commentsfollow: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 (§ 1.76).1. Domestic benefit and foreign priorityclaims.2. Form requirements.I. Miscellaneous rules.1. Mail stop (§ 1.1(e)).2. Signatures (§ 1.4).3. Juristic entity (§ 1.31).4. Correspondence address (§ 1.33).5. Person making declaration (§ 1.64).6. Noncompliant declarations (§ 1.67).7. Statement under § 3.73.8. Lack of deceptive intent.A. Assignee FilingComment 1: A number of commentsquestioned the Office permittingassignee filing only under the narrowexceptions of death, incapacity, absenceor refusal. A number of commentssuggested that the rules be revised torecognize that ‘‘applicant’’ and‘‘inventor’’ are no longerinterchangeable because assignees,parties to whom an inventor is obligatedto assign, and parties with a sufficientproprietary interest in the matter, canalso be applicants. One comment statedthat by replacing the language in 35U.S.C. 118 (which formerly permittedfiling by other than the inventor only inthe situations where the inventor wasunwilling or unavailable to execute theoath or declaration) with broaderlanguage, Congress has in 35 U.S.C. 118authorized an assignee to file anapplication for a patent as the applicant.A number of comments requested thatthe rules be revised for submission of

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48799sroberts on DSK5SPTVN1PROD with RULESthe inventor statements in applicationsfiled by assignees and obligatedassignees to simplify the submission ofthe inventor statements, facilitate theprocess by which an assignee orobligated assignee may file andprosecute applications, and accomplishgreater international harmonization.One comment suggested that, in theinterest of procedural harmonizationwith the patent laws of other countries,the Office should dispense with the oathor declaration entirely. One comment,however, expressed agreement withmost of the changes in the notice ofproposed rulemaking, and agreementwith the requirement that inventorsmust execute oaths or declarations.Response: The Office agrees that theAIA changes 35 U.S.C. 118 to permit anassignee, an obligated assignee, or aperson who otherwise shows sufficientproprietary interest in the matter tomake an application as the ‘‘applicant.’’Accordingly, this final rule revises therules of practice to provide thatassignees, obligated assignees (parties towhom an inventor is obligated to assign)and parties who otherwise showsufficient proprietary interest in thematter may file an application for patentas the applicant. Historically, being theapplicant was synonymous with beingthe one to execute the oath ordeclaration under 35 U.S.C. 115.However, the AIA amends 35 U.S.C. 115to separate being the applicant frombeing the one who must execute theoath 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 filedby a person other than the inventor asthe applicant, but 35 U.S.C. 115 stillalso requires an oath or declaration fromthe inventor (except in certainsituations). The situations in which theapplicant for patent may submit asubstitute statement in lieu of an oath ordeclaration with respect to an inventorare set forth in 35 U.S.C. 115(d)(2).Comment 2: A number of commentsrequested that the Office recognize theability of assignees, obligated assignees,and persons who otherwise showsufficient proprietary interest in thematter to file an application and haverequested that the requirements besimplified. A few comments suggestedthat in the case of an assignment orobligation to assign, no documentsshould be required to perfect the rightto file the application. The commentsstated that an application filed by theassignee or an obligated assignee plusan oath or declaration by the inventorswould be sufficient. One commentsuggested that the Office should requireno more than a copy of the assignmentto perfect the right to execute an oath ordeclaration, as the inventor no longerhas a property interest and thus theassignee should be able to make theapplication without additionalrequirements. One comment suggestedthat the Office permit assignees to makecertifications regarding ownership inthe application data sheet.Some comments recognized that theOffice would likely want documentscontaining ‘‘proof of the pertinent factsand a showing that such action isappropriate to preserve the rights of theparties’’ where an application is filed bya party with sufficient proprietaryinterest. However, two comments statedthat there is no need for the Office toreview these documents to determinesufficiency, but rather the Office shouldonly review them to determine whetherthey appear to satisfy the requirementsfor submission, with one commentstating that any challenge to a filingshould be made in court. One commentrequested that the Office not includeany confidential documents used as‘‘proof’’ in the public image filewrapper. The comment suggested thatthe Office could state in the file wrapperthat certain agreements were reviewedby the Office and found to fulfill thecriteria.Response: Section 1.46 as adopted inthis final rule permits the filing ofapplications by assignees, obligatedassignees, and persons who otherwiseshow sufficient proprietary interest inthe matter with an application datasheet identifying the party filing theapplication (the applicant). Forassignees and obligated assignees,documentary evidence of an ownershipinterest should be recorded no later thanthe date the issue fee is paid. See§ 1.46(b)(1).Section 1.46 provides that parties whootherwise show sufficient proprietaryinterest in the matter must also submita petition with documentary evidence ofthe sufficient proprietary interest. 35U.S.C. 118 provides that a party withsufficient proprietary interest may filean application, but the filing is done onbehalf of and as agent for the inventorson proof of the pertinent facts. TheOffice believes that the petition isnecessary in these situations todetermine whether an appropriate partyis filing the application, which requiressome additional review as to theassertion of sufficient proprietaryinterest. It is not the intent of the Officeto make a definitive factualdetermination of the showing ofsufficiency of the proprietary interest,but the showing will be reviewed toensure that the party has a valid basisfor being treated as the applicant forVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00025 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6patent on behalf of and as agent for theinventors.The documentary evidence submittedto establish proof of sufficientproprietary interest is not always asclear-cut as an assignment or adocument showing an obligation toassign. Thus, it is appropriate that thedocumentary evidence be visible in thefile record when the applicationbecomes available to the public.Comment 3: A number of commentssuggested that all that should berequired on filing is a two-partstatement affirming: (1) that theapplicant is either the inventor, or isauthorized by the inventor to file theapplication, and (2) that the applicanthas filed with the application or will filean inventor statement under 35 U.S.C.115 before receiving a notice ofallowance. In addition to the two-partstatement, one comment suggested thatevery application as filed could berequired to contain identifyinginformation essential to the orderlyprocessing of the application, such asthe name of the inventor, the name ofthe applicant (if different from theinventor), residence, andcorrespondence address. A number ofcomments suggested that, other than thetwo-part statement and identifyinginformation, no more than the minimumaverments mandated by 35 U.S.C. 115(b)should be required in an inventorstatement.Response: In response to thecomments, this final rule revises § 1.63to require only the statements that arerequired by 35 U.S.C. 115(b), providedthat an application data sheet issubmitted to provide inventor and otherapplication information.Comment 4: A number of commentssuggested that the application data sheetshould be used to provide inventorinformation instead of an oath ordeclaration. The comments suggestedthat the vast majority of applications donot have inventorship or assignmentissues and the process of dealing withthe formalities should be deferred untilan indication of allowable subjectmatter. Another comment stated that theassignee-applicant is in the best positionto decide who is to be named as aninventor, based on a legal analysis ofwhat it takes to be an inventor, and theOffice on its own should not raiseinventorship issues, as such issues arebest handled through a derivation actionor a court action. One comment notedthat early submission of the declarationcan be difficult for foreign applicantsand entities whose inventors are nolonger available.Response: The Office needs thecorrect identification of the inventive

48800 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESentity prior to examination of theapplication to determine whether anexception under 35 U.S.C. 102(b), asamended in the AIA, is applicable andto conduct a double patenting analysis.Accordingly, an applicant may file theapplication and identify the inventiveentity in either an application data sheetunder § 1.76 or in the inventor’s oath ordeclaration. If an application data sheetis submitted with the application orwithin the period provided in§§ 1.53(f)(1) or (f)(2), an applicant maypostpone submission of the inventor’soath or declaration until the applicationis in condition for allowance. The Officedoes not generally question whether theidentified inventive entity is theinventor except in interference andcontested cases.Comment 5: One comment suggestedthat the proposed rules not include arequirement for notification of a changein ownership no later than payment ofthe issue fee.Response: 35 U.S.C. 118 requires theOffice to grant the patent to the realparty in interest where the applicationwas filed under 35 U.S.C. 118 by aperson other than the inventor. In orderfor the Office to carry out this statutorymandate, the Office must be notified ofany change in the real party in interestno later than payment of the issue fee.Therefore, § 1.46, as adopted in thisfinal rule, requires applicants to notifythe Office of any change in the realparty in interest no later than paymentof the issue fee in the situation wherea real party in interest has filed theapplication under § 1.46.B. Oath/Declaration1. Time of SubmissionComment 6: A number of commentssuggested that, in view of 35 U.S.C.115(f), the Office should not requireapplicants to file the inventor’s oath ordeclaration until the application is incondition for allowance. One commentsupported early submission of the oathor declaration as better for theexamination process and patentpendency.Response: In response to thecomments, this final rule permitsdelaying submission of the inventor’soath or declaration until the applicationis otherwise in condition for allowance.The inventor’s oath or declaration willnot be required within the periodspecified in §§ 1.53(f)(1) or (f)(2) butmay be filed when the application isotherwise in condition for allowance ifthe application is an original (nonreissue)application that contains anapplication data sheet in accordancewith § 1.76 identifying: (1) Eachinventor by his or her legal name; and(2) a mailing address where the inventorcustomarily receives mail, andresidence, if an inventor lives at alocation which is different from wherethe inventor customarily receives mail,for each inventor.It should be noted that 35 U.S.C.115(f) does not provide that anapplicant is entitled as a matter of rightto postpone submission of the inventor’soath or declaration until an applicationis in condition for allowance. TheOffice’s authority to set the period (andconditions) under which the inventor’soath or declaration may be submittedafter the filing date of an application isset forth in 35 U.S.C. 111(a)(3) (‘‘Theapplication must be accompanied by thefee required by law. The fee and oath ordeclaration may be submitted after thespecification and any required drawingare submitted, within such period andunder such conditions, including thepayment of a surcharge, as may beprescribed by the Director.’’) and (a)(4)(‘‘Upon failure to submit the fee andoath or declaration within suchprescribed period, the application shallbe regarded as abandoned, unless it isshown to the satisfaction of the Directorthat the delay in submitting the fee andoath or declaration was unavoidable orunintentional.’’). 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 111thCongress) would have changed thisprovision to delete any reference to anoath (or declaration) such that the Officecould not set the period (andconditions) under which the inventor’soath or declaration could be submittedafter the filing date of an application.However, the AIA maintains theexisting provisions of 35 U.S.C.111(a)(3) and (a)(4), adding only ‘‘ordeclaration’’ after every instance. Thus,the Office retains the authority to set theperiod (and conditions) under whichthe inventor’s oath or declaration mustbe submitted.It should also be noted that 35 U.S.C115(f) does not require the Office topermit applicants to postponesubmission of the inventor’s oath ordeclaration until allowance. The Officepreviously proposed under existing 35U.S.C. 111 and 115 to permit applicantsto delay submission of an oath ordeclaration until the expiration of a timeperiod set in the ‘‘Notice ofAllowability.’’ See Changes toImplement the Patent Business Goals,63 FR 53497, 53503–06 (Oct. 5, 1998).The Office, however, did not proceedwith that proposal. See Changes toImplement the Patent Business Goals,64 FR 53771, 53773–74 (Oct. 4, 1999).VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00026 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6Thus, the only effect of 35 U.S.C. 115(f)is to preclude the Office from issuing anotice of allowance until each requiredinventor’s oath or declaration has beenfiled.Comment 7: Two commentsexpressed concern about the fees to becharged for the late submission of anoath or declaration. One comment statedthat 35 U.S.C. 111(a) and 371 do notrequire a surcharge for submitting theoath or declaration after the filing date.One comment stated that thepreliminary proposed patent feeschedule published February 7, 2012,indicated that the $130 surcharge wouldbe increased to $140 and that no actualunit cost was associated with this feebecause there was no specific activitysupporting it other than collecting anddepositing the fee. The comment statedthat this contradicts the Office’sstatement in the notice of proposedrulemaking that applications filedwithout an oath or declaration requirespecial processing. The comment alsoquestioned the proposed fee of $3,000for filing the oath or declaration up tothe notice of allowance on the samebasis that there is no specific activitysupporting the fee other than collectingand depositing the fee.Response: The notice of proposedrulemaking did not propose, and thisfinal rule does not adopt, any change tothe late filing surcharge under § 1.16(f).As discussed previously, 35 U.S.C.111(a)(3) provides that: ‘‘The fee andoath or declaration may be submittedafter the specification and any requireddrawing are submitted, within suchperiod and under such conditions,including the payment of a surcharge, asmay be prescribed by the Director.’’While the Office is not ‘‘required’’ tocharge this surcharge, the Office ispermitted to require it. The surcharge isdue to the additional processing costsincurred when the inventor’s oath ordeclaration is submitted after filing ofthe application and the initialprocessing of the application. The factthat the cost of the additional processingof the later-submitted oath ordeclaration is not tracked separatelyfrom other pre-examination costs doesnot negate the existence of this cost. Inaddition, under the changes in this finalrule the Office will incur additionalcosts due to the need to tracksubmission of the inventor’s oath ordeclaration up to allowability of theapplication.The Office published materials on itsInternet Web site in February 2012,associated with a rulemaking to set andadjust patent fees using the authorityprovided in section 10 of the AIA,which proposed a $3,000 fee to

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48801sroberts on DSK5SPTVN1PROD with RULESpostpone submission of the inventor’soath or declaration until the applicationis in condition for allowance. The finalrule to set and adjust patent fees undersection 10 of the AIA will not includethis proposal.Comment 8: One comment suggestedthat examiners should be properlycompensated for any additional workrequired by delays in establishing theproper inventorship.Response: The Office will require thatthe inventorship be named in anapplication data sheet (or the inventor’soath or declaration) prior toexamination. Thus, the inventorshipwill be established before an applicationis examined and examiners should notexperience any delays with respect tothe establishment of the properinventorship. Additionally,compensation of examiners is not asubject of this rulemaking.2. AvermentsComment 9: A number of commentssuggested that the Office should notrequire the inventor’s oath ordeclaration to contain any statementsother than the statements required by 35U.S.C. 115(b).Response: 35 U.S.C. 115(c) providesthat the Office may specify additionalinformation relating to the inventor andto the invention that is required to beincluded in an oath or declaration under35 U.S.C. 115(a). In response tocomments, however, the Office isrequiring that an oath or declarationcontain only the averments required by35 U.S.C. 115(b), if the inventorinformation is provided in anapplication data sheet. The Office hasnot retained regulatory averments to bemade in the inventor’s oath ordeclaration, such as acknowledgementof the duty of disclosure under § 1.56.However, a person may not execute anoath or declaration unless that personhas reviewed and understands thecontents of the application, includingthe claims, and is aware of the duty todisclose to the Office all informationthat is material to patentability. See§ 1.63(c).Comment 10: One comment statedthat the averment in proposed§ 1.63(a)(5) that the application ‘‘wasmade or authorized to be made by theinventor’’ should not be required in anoath or declaration that is signed by theassignee.Response: 35 U.S.C. 115(b)(1) requiresthat an oath or declaration contain astatement that the application was madeor was authorized to be made by theaffiant or declarant irrespective ofwhether the application was filed by theassignee. Therefore, § 1.63(a)(4) requiresthe oath or declaration to state that theapplication was made or was authorizedto be made by the person executing theoath or declaration.3. Inventors NamedComment 11: A number of commentssuggested that the Office should notrequire the inventor’s oath ordeclaration to provide the names of allof the inventors, which could beprovided together in another document(such as an application data sheet).Response: An inventor executing anoath or declaration need only identifyhimself or herself as an inventor,provided an application data sheet issubmitted to identify the completeinventive entity.Comment 12: One comment statedthat proposed § 1.63(d)(2) should bedeleted since the naming of theinventive entity should be establishedby filing an application data sheet in acontinuing application and thus therewould be no need to request removal ofinventors.Response: A request to remove one ormore inventors is retained for thosesituations where an application datasheet is not supplied concurrently withor before submission of the inventor’soath or declaration.4. Copies in Continuing ApplicationsComment 13: One comment suggestedthat the Office scan the inventorstatement or assignment into theOffice’s image file wrapper (IFW)system so that a copy of any previouslyfiled statement would not be required ina later-filed application claimingbenefit.Response: Consistent with preexistingpractice and the notice ofproposed rulemaking, the Office isrequiring a copy of the oath ordeclaration or an assignment serving asthe oath or declaration in continuingapplications so that the Office candetermine whether an oath ordeclaration has been executed by orwith respect to each inventor in acontinuing application.Comment 14: One commentquestioned whether a combinationassignment and oath or declaration in aparent application would need to berecorded against a continuation or adivisional application when also usedin the continuation or divisionalapplication. The comment alsoquestioned whether the assignee listedon such an assignment would still needto be the owner when submitting theoath or declaration in the continuationor divisional application.Response: Section 1.63(d)(1) providesthat a newly executed oath orVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00027 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6declaration under § 1.63 is not requiredfor a continuing application where acopy of the oath or declaration from theearlier-filed application is provided.Where the oath or declaration is setforth in an assignment document thatwas recorded against the parentapplication, there is no requirement thatthe copy be again recorded against thecontinuing application. 35 U.S.C.115(g)(1) provides that the requirementunder 35 U.S.C. 115 for an oath ordeclaration shall not apply to anindividual named as the inventor or ajoint inventor in an application thatclaims benefit under 35 U.S.C. 120, 121,or 365(c) of an earlier-filed application,if: (1) An oath or declaration meetingthe requirements of 35 U.S.C. 115(a) wasexecuted by the individual and wasfiled in connection with the earlier-filedapplication; (2) a substitute statementmeeting the requirements of 35 U.S.C.115(d) was filed in connection with theearlier-filed application with respect tothe individual; or (3) an assignmentmeeting the requirements of 35 U.S.C.115(e) was executed with respect to theearlier-filed application by theindividual and was recorded inconnection with the earlier-filedapplication.Comment 15: One comment assertedan inconsistency between proposed§ 1.63(d)(1)(iii) which requires a newoath or declaration from those inventorsbeing added and § 1.63(d)(2), whichpermits deletion by a separate paperwithout a new oath or declaration. Thecomment indicated that it is not clearhow the statements in the oath ordeclaration filed in the parentapplication can remain true where acopy of the declaration from the parentis filed along with declarations executedby only the newly added inventors.Other comments noted that proposed§§ 1.63(a)(4) and (a)(6) would preventthe use of a copy of an oath ordeclaration in continuation-in-partapplications and possibly continuationand divisional applications.Response: Section 1.63(d), as adoptedin this final rule, provides for use of acopy of the inventor’s oath ordeclaration from a prior-filedapplication in a continuing application,including a continuation-in-partapplication. 35 U.S.C. 115(g) does notrequire a new inventor’s oath ordeclaration if: (1) An oath or declarationmeeting the requirements of 35 U.S.C.115(a) was executed by the individualand was filed in connection with theearlier-filed application; (2) a substitutestatement meeting the requirements of35 U.S.C. 115(d) was filed in connectionwith the earlier-filed application withrespect to the individual; or (3) an

48802 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESassignment meeting the requirements of35 U.S.C. 115(e) was executed withrespect to the earlier-filed applicationby the individual and was recorded inconnection with the earlier-filedapplication. Thus, an additionalinventor’s oath or declaration would benecessary in a continuing applicationonly for an inventor for whom an oathor declaration was not submitted in theprior-filed application. Section 1.63(d),as adopted in this final rule, does notinclude the proposed requirement thatthe statements in the copy of theinventor’s oath or declaration from aprior-filed application also beapplicable to the continuingapplication.5. Supplemental Oath or DeclarationComment 16: One comment assertedthat once a one-time statement from aninventor has been made in satisfactionof 35 U.S.C. 115, 35 U.S.C. 115(h)(2)precludes the Office from requiring anysupplemental oath or declaration.Several comments objected to proposed§ 1.67 and asserted that the Office wasproposing to merely retain requirementsfor supplemental oaths, notwithstandingthe statutory prohibition against them.Response: Section 1.67(c) providesthat the Office will not require a personwho has executed an oath or declarationin compliance with 35 U.S.C. 115 and§ 1.63 or § 1.162 to provide anadditional oath or declaration. 35 U.S.C.115(h)(2) precludes the Office fromrequiring a supplemental oath ordeclaration only if the initial oath ordeclaration complied with 35 U.S.C. 115and § 1.63 or § 1.162.Comment 17: One comment expressedconcern about the elimination ofsupplemental oaths (proposed § 1.67(b)),as they give the inventor theopportunity to object to the assignee’sinterpretation of the invention whichmay be broader than the inventor’sunderstanding of the description. Thecomment noted the existing requirementthat reissue oaths or declarations besigned by the inventors when one ormore claims are being broadened, andsuggested that inventors be permitted torequest ‘‘post grant review’’ to clarifynew matter issues that may arise fromdifferences in interpretation.Response: 35 U.S.C. 115(h)(1) and§ 1.67 provide that an applicant maysubmit an inventor’s oath or declarationto correct any deficiencies orinaccuracies present in an earlier-filedinventor’s oath or declaration. 35 U.S.C.115(h)(2) provides that supplementalstatements are not required where theoath or declaration meets 35 U.S.C.115(a) or the assignment meets therequirements of 35 U.S.C. 115(e).Inventors still must execute an oath ordeclaration except under the permittedcircumstances. Thus, inventors wouldstill have an opportunity to review theapplication in connection with theexecution of the oath or declaration andraise any concerns regarding breadth ofthe claimed invention with the assignee.Moreover, an inventor may have accessto the application file and can followthe prosecution. 35 U.S.C. 321(a)provides that a person who is not theowner may request post grant review ofa patent.6. Effective DateComment 18: One commentquestioned whether the Office wouldaccept oaths or declarations (1) In anapplication filed prior to September 16,2012, in which the oath or declarationis filed on or after September 16, 2012;and (2) in an application filed on orafter September 16, 2012, where theoath or declaration was executed priorto September 16, 2012. One commentsuggested that the Office clarify § 1.63 toaddress applications that bridge theeffective date of the rule to make clearthat a new declaration will not berequired in a continuing applicationwhere the prior declaration wascompliant with the new requiredstatutory statements. A few commentsrecommended that oaths or declarationsfiled before September 16, 2012, begrandfathered in and accepted incontinuing applications filed on or afterSeptember 16, 2012, even though theoaths or declarations contain thelanguage in former 35 U.S.C. 115 andnot 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 applicationfiled on or after September 16, 2012.Accordingly, the date of execution ofthe oath or declaration is not relevant,particularly as the Office does not checksuch dates of execution. MPEP § 602.05.For applications filed prior toSeptember 16, 2012, any oath ordeclaration filed before, on, or afterSeptember 16, 2012, must comply withthe oath and declaration rules in effectprior to September 16, 2012. Any oathor declaration submitted in anapplication filed on or after September16, 2012, (regardless of the date ofexecution of the oath or declaration)must meet the requirements of 35 U.S.C.115 as amended by the AIA.With respect to continuingapplications, 35 U.S.C. 115(g)(1)(A)provides an exception to a newlyexecuted oath or declaration only wherethe oath or declaration in the earlierfiledapplication meets the requirementsof amended 35 U.S.C. 115(a) whichVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00028 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6must include the required statements in35 U.S.C. 115(b). Accordingly, a copy ofan oath or declaration from a priorapplication filed before September 16,2012, must meet the requirements of 35U.S.C. 115 as amended by the AIA.Nevertheless, in view of the changesto permit applicants to postpone thesubmission of the inventor’s oath ordeclaration until the application isotherwise in condition for allowance,the Office will no longer review an oathor declaration in an application under35 U.S.C. 111(a) for compliance with§ 1.63 (or a substitute statement forcompliance with § 1.64) during theexamination process. The Office willreview applications to determinewhether the application includes anoath or declaration executed by or withrespect to each inventor when theapplication is in condition forallowance.7. MiscellaneousComment 19: One comment notedthat 35 U.S.C. 115 requires ‘‘the name ofthe inventor,’’ whereas proposed§ 1.63(a)(2) requires identification by‘‘his or her full name without anyabbreviation (except for a middleinitial)’’ and thus places furtherrestrictions on what would otherwise bean uncomplicated requirement. Anothercomment stated that the rules shouldpermit an inventor to abbreviate his orher first name if he or she is known byhis or her middle name.Response: The Office agrees that thephrase ‘‘his or her full name withoutany abbreviation (except for a middleinitial)’’ is more complicated thannecessary. The requirement foridentification of the name of theinventor in the rules of practice (e.g.,§ 1.63(a)(1)) will be for the legal name ofthe inventor.Comment 20: One comment suggestedeliminating the requirement for theresidence in that: (1) It is still unclearwhat is intended by residence (e.g., city,state, province, prefecture, etc.); (2)many inventors would prefer to keeptheir residence private, especially wherethe mailing address is the place ofemployment; and (3) it requiresassignees to violate their domesticprivacy laws in some countries (e.g.,United Kingdom) by requiring inventorsto make residence information publiclyavailable.Response: The comment appears toconfuse the separate requirements forresidence and mailing address. Theresidence, as noted in MPEP § 605.02, isa city and either a state or foreigncountry, while a mailing address, asnoted in MPEP § 605.03, is where onecustomarily receives mail, such as one’s

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48803sroberts on DSK5SPTVN1PROD with RULEShome or business address. Additionally,a post office box may be used as themailing address. The Office reviewsresidence information to ensure that aresidence is provided, but the Officedoes not review the manner in whichthe residence is stated. Thus, applicantsshould not have concerns aboutdistinctions between province andprefecture.Comment 21: One comment requestedrevising the title to be ‘‘Inventor’s oathor declaration’’ to distinguish thedeclaration requirements in § 1.63 fromwho may apply for a patent, whichshould be addressed by § 1.41.Response: The Office agrees that thetitle of § 1.63 should read ‘‘Inventor’soath or declaration.’’ The title has beenrevised as suggested.Comment 22: One comment statedthat proposed § 1.63(c)(2) needs to becorrected for grammatical clarity since itis unclear how a reference itself wouldconstitute an assignment.Response: Section 1.63(e)(2) containsthe language of proposed § 1.63(c)(2).The provision merely explains that thephrase ‘‘oath or declaration’’ under§ 1.63 as referred to in the rules coversa combination assignment and oath ordeclaration document.Comment 23: One comment suggestedthat since a ‘‘wet’’ signature is requiredfor a declaration, the practitioner shouldbe allowed to obtain a ‘‘wet’’ signaturefor the practitioner’s file and thensubmit an S-signature by thepractitioner with a notice to the Officethat a ‘‘wet’’ signature is on file withthis practitioner and will be supplied tothe Office if requested.Response: An oath or declaration maybe signed either with a wet(handwritten, per § 1.4(d)(1)) signatureor an S-signature (e.g., a printed nameinserted between forward slashes, per§ 1.4(d)(2)), regardless of whether theoath or declaration is filed with theOffice in paper, facsimile transmitted, orfiled via the Office’s Electronic FilingSystem (EFS-Web). An S-signature isany signature not covered by § 1.4(d)(1),and an S-signature must be personallyinserted by the signer per § 1.4(d)(2)(i).The practice suggested in the commentwould not have the signer personallyinsert the S-signature. Thus, it wouldnot be a proper signature by theinventor.Comment 24: One comment suggestedretaining in § 1.63 the statement that nominimum age is required to sign an oathor declaration.Response: Section 1.63(c) continues torecite that there is no minimum age fora person to be qualified to execute anoath or declaration.Comment 25: One comment requestedinformation as to whether the Officewill have updated forms to reflect theproposed rule changes at the same timethe rules take effect.Response: The Office will haverevised forms available prior to theeffective date of this final rule.C. Substitute StatementsComment 26: Several commentsquestioned the need for proof of factsregarding the inventor who is notexecuting the inventor’s oath ordeclaration when filing a substitutestatement where an assignee, party towhom an inventor is under anobligation to assign or a party whootherwise shows sufficient proprietaryinterest in the matter files theapplication.Response: In response to thecomments, the Office is discontinuingthe practice of routinely requiring proofof facts when an oath or declaration isnot executed by each inventor. Section1.64 provides that an applicant under§§ 1.43, 1.45 or 1.46 may execute asubstitute statement with identifyinginformation regarding (1) the inventorand the person executing the statement,and (2) the particular permittedcircumstances involved, e.g., theinventor cannot be reached or hasrefused to execute the oath ordeclaration. Furthermore, a person maynot execute a substitute statementunless that person has reviewed andunderstands the contents of theapplication and is aware of the duty todisclose to the Office all informationthat is material to patentability. Proof ofthe circumstances (e.g., attempts tocontact the inventor) is no longerrequired.Comment 27: One comment expressedconcern about the effect of 35 U.S.C.115(d)(2)(B). The comment identifiedthe situation where one joint inventorrefuses to execute the oath ordeclaration and since none of theinventors are under an obligation toassign, the other executing inventorsmay not be able to provide a substitutestatement on behalf of the nonsigninginventor.Response: 35 U.S.C. 116(b) providesthat if a joint inventor refuses to join inan application for patent or cannot befound or reached after diligent effort,the application may be made by theother inventor on behalf of himself andthe omitted inventor. Section 1.45, asamended in this final rule, permits theother joint inventor or inventors to makethe application for patent as theapplicant on behalf of themselves andthe omitted inventor if a joint inventorrefuses to join in an application forVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00029 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6patent or cannot be found or reachedafter diligent effort. 35 U.S.C. 115(d)(1)provides that the applicant for patentmay provide a substitute statement inlieu of execution of an oath ordeclaration by an inventor under 35U.S.C. 115(a) under such additionalcircumstances as the Director specifiesby regulation. Thus, § 1.64 as adopted inthis final rule permits another jointinventor to execute a substitutestatement in lieu of execution of an oathor declaration by the omitted inventor ifa joint inventor refuses to join in anapplication for patent (regardless ofwhether there is an obligation to assign)or cannot be found or reached afterdiligent effort.Comment 28: One comment notedproposed § 1.47 and requested that theassignee be allowed to execute the oathor declaration on behalf of the assigninginventor in general, and not only incircumstances where the inventor hasrefused or cannot be found or reachedto execute the oath or declaration.Response: 35 U.S.C. 115(a) explicitlyrequires execution of an inventor’s oathor declaration by each inventor exceptas otherwise provided in 35 U.S.C. 115.The situations in which the applicantfor patent may submit a substitutestatement in lieu of an oath ordeclaration with respect to an inventorare set forth in 35 U.S.C. 115(d)(2).D. Combined Declaration andAssignment1. GenerallyComment 29: One commentrecognized that the AIA provision fordual-purpose documents (assignmentand oath or declaration) is alreadypossible and asserted that the AIAprohibits the Office from making rulesthat impede the use of dual-purposedocuments, such as requiring therecordation of the document beforesubmission in the application asrequired by proposed § 1.63(c)(1)(ii).The comment asserted that therecordation requirement is neitherbeneficial to the public nor beneficial toassignees. The comment noted thatsome assignees may save up and thenrecord multiple assignments at once tosave on recording fees. In the absence ofan explanation as to why flexibility is tobe taken away, the comment suggestedthat the proposed requirement forrecordation should not be adopted andthe assignment should be made ofrecord in the application file.A few comments, however, opposedsubmitting a copy of an assignmentcontaining the statements required of anoath or declaration in the applicationfile and noted that Congress did not

48804 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESrequire an assignment with such oath ordeclaration statements to be included inthe application file and did not envisionthat the statement would be ‘‘examined’’by a patent examiner. These commentsstated that 35 U.S.C. 115(e) permits theassignment to simply be recorded in theassignment records without submittinga copy in the application file.Response: 35 U.S.C. 115(e) providesfor making the statements requiredunder 35 U.S.C. 115(b) and (c) in an‘‘assignment of record,’’ and 35 U.S.C.115(f) provides that a notice ofallowance under 35 U.S.C. 151 may beprovided to an applicant only if theapplicant has filed each required oath ordeclaration under 35 U.S.C. 115(a), orhas filed a substitute statement under 35U.S.C. 115(d), or recorded anassignment meeting the requirements of35 U.S.C. 115(e). 35 U.S.C. 115(e) and (f)(emphasis added). Thus, the recordingrequirement of § 1.63(e)(1)(ii) is requiredby 35 U.S.C. 115, which envisions thatthe assignment containing thestatements required of an oath ordeclaration be ‘‘recorded.’’ 35 U.S.C.111(a)(2)(C) also requires that anapplication contain an oath ordeclaration. If an applicant files inpaper an assignment-statement forrecordation together with a patentapplication, the Office will scan a copyof the assignment into the Office IFW ofthe application and forward thesubmission to Assignment RecordationBranch provided that there is aconspicuous indication of an intent toutilize the assignment as the requiredoath or declaration under § 1.63.Comment 30: One comment statedthat proposed § 1.63(a) should beamended to clarify that an assignmentthat includes the statements required by35 U.S.C. 115(b) and (c) may be filed ‘‘inlieu of filing such statementsseparately’’ 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 anassignment may also serve as the oathor declaration.Comment 31: With respect to thecombined assignment and oath ordeclaration document, one commentquestioned the result if one portion isdetermined to be void or voidable. Thecomment specifically questionedwhether the declaration portion wouldbe void or invalid where the assignmentportion is found to be void or invalid.The comment stated that the Officeshould clearly indicate that the legality(or invalidity) of one part will notimpact the other part.Response: Where there is an error inthe oath or declaration portion, such asin bibliographic information, the rest ofthe oath or declaration is still effectiveand only that error need be corrected.See § 1.67(a). In other instances, such asa failure to provide a statutorilyrequired averment, the oath ordeclaration must be resubmitted. Wherethe assignment portion of a combinedassignment and oath or declarationdocument is found to be invalid, thecombined assignment and oath ordeclaration document would remaineffective for the declaration portionprovided that the assignment containsthe statements required of an oath ordeclaration.2. Recordation of AssignmentsComment 32: One comment opposedthe proposed addition to a recordationcover sheet of a check-box indicatingthat the assignment is to be used in anapplication to comply with § 1.63. Thecomment asserted that the person filingthe assignment is likely not a registeredpractitioner and should not have theburden of arriving at a legal conclusionas to whether the document is to serveas a declaration. The comment furtherasserted that the application andassignment are frequently separatelyfiled electronically by differentindividuals, and requested that the ruleshould be tailored for non-electronicfiling of the assignment containing theinventor statement. Another commentsuggested that the Office should updatethe Office’s Patent ApplicationInformation Retrieval (PAIR) system todirectly link recorded assignments tothe application as recorded assignmentsare now accessible only by physicallytraveling to the Office, at substantialburden and cost on the requester.Response: Section 3.31 requires thatwhere an applicant has included thestatements required by 35 U.S.C. 115(b)and (c) in an assignment, the applicantindicate as much to the Office via acheck-box on the assignmentrecordation cover sheet. Thus, the Officewill know both to record the assignmentin the assignment database and to placea copy of the assignment in its relatedapplication file, so that applicants willnot be required to submit an oath ordeclaration in the application.There are three ways to submit anassignment-statement document: (1) Inpaper (including facsimiletransmission); (2) through the ElectronicPatent Assignment System (EPAS); and(3) via EFS-Web. For paper submissions,the Office frequently receives in thesame envelope a patent application, anassignment to be recorded in connectionwith that application, the AssignmentVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00030 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6Recordation Cover Sheet (PTO–1595)and the recordation fee. In suchcircumstances, the Office would simplyforward the assignment document andPTO–1595 to the AssignmentRecordation Branch for recording. Asdiscussed previously, if an applicantindicates that an assignment submittedfor recording also contains statementsrequired of an oath or declaration, theOffice will scan a copy of theassignment into the Office IFW of theapplication and forward the submissionto Assignment Recordation Branch.The Office notes the concern with theability of a person submitting theassignment-statement document forrecordation being able to make a legalconclusion as to the ability of anassignment to serve as a combinationassignment and oath or declarationdocument and so indicate on therecordation cover sheet. The failure tocheck the box to identify the submissionas a combination assignment and oathor declaration document, however,would not prevent the applicant fromsubmitting a copy of the assignmentstatementin the application to serve asthe oath or declaration. Moreimportantly, it is not necessary for aperson to make a legal conclusion as tothe ability of an assignment to serve asa combination assignment and oath ordeclaration document and so indicateon the recordation cover sheet. Theperson would only need to know thepurpose for submission of theassignment.E. Power of AttorneyComment 33: One comment suggestedthat in regard to an application filed byan assignee-applicant, the Office shouldpermit only a power of attorney fromthe assignee-applicant and not from theinventors. One comment suggested thatthe reference in § 1.33(f) to § 3.71 (aswell as § 1.31) is unnecessary in that anassignee may easily apply for a patentand thus be the applicant referred to in§ 1.31.Response: Section 1.33(b)(3) providesthat a power of attorney can be signedby the applicant. Section 1.42(b)provides that if a person is applying fora patent as provided in § 1.46, theperson applying for a patent under§ 1.46 (and not the inventor) is theapplicant. Accordingly, an assignee orobligated assignee who has filed anapplication may supply an effectivepower of attorney without the need toestablish the right to take action under§ 3.71. For example, an assignee whofiles an application can appoint a powerof attorney, provided that the partygranting the power is the same partywho filed the application. Persons who

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48805sroberts on DSK5SPTVN1PROD with RULESotherwise show sufficient proprietaryinterest in the matter may supply apower of attorney along with a petitionunder § 1.46(b)(2), which power wouldbe effective once the petition is granted.If an assignee, obligated assignee, orperson who otherwise show sufficientproprietary interest in the matter isapplying for a patent as provided in§ 1.46, the inventor is not the applicantand the Office would not accept a powerof attorney from the inventor.Comment 34: One comment suggestedthat where the original declarationprovides a power of attorney by theinventors, the power of attorney shouldautomatically ‘‘transfer’’ as being apower of attorney by the assignee wherethe inventors have or are obligated toassign their portion to the assignee. Thecomment also stated that the power ofattorney should continue in anapplication when ownership istransferred. Where a ‘‘new’’ assignee/applicant does not wish the originalattorney to have power of attorney, the‘‘new’’ assignee/applicant should thenprepare and file the appropriaterevocation and new power of attorneyand correspondence forms.Response: Under this final rule, anassignee may file an application on itsown behalf as the applicant and shouldprovide the initial power of attorney.The transfer of ownership of anapplication is external to the Office andwould not affect any existing power ofattorney in the application file. See§ 1.36(a). It is the Office’s experiencethat where ownership of an applicationis changed, the new assignee takes overthe prosecution and provides a newpower of attorney.Comment 35: Two comments statedthat, with respect to proposed § 1.32(d),if the power of attorney in the earlierapplication is from an assignee and acontinuing application is filed that addsnew inventors, a new power of attorneyshould not be required where the newlyadded inventors have also assigned, orare under an obligation to assign, to thesame assignee and the assignment isrecorded at the Office.Response: Section 1.32(d) providesthat a power of attorney will have effectin a continuing application if a copy ofthe power is supplied in the continuingapplication, unless the power ofattorney was granted by the inventorsand the continuing application namesan inventor who was not named in theprior application. Therefore, if thepower of attorney in the earlierapplication is from the assignee (asdiscussed in the comment), a newpower of attorney is not required.Comment 36: One comment statedthat proposed § 1.32(d) should bebroadened to include powers of attorneyfiled in provisional applications so thata power of attorney filed in aprovisional application would haveeffect in a nonprovisional applicationthat claims the benefit of the provisionalapplication under 35 U.S.C. 119(e) ifsubmitted in the nonprovisionalapplication.Response: It is the Office’s experiencethat powers of attorney are not usuallysupplied in provisional applications,particularly as there is no prosecutionand they become abandoned after a yearas a matter of law. Accordingly, there islittle need to provide for the carryoverof powers of attorney from a provisionalapplication to a nonprovisionalapplication.Comment 37: One comment assertedthat the power of attorney rules are‘‘form over substance’’ and should berelaxed. The Office should leave it tothe attorneys and law firms to obtain therequisite paperwork granting thempower of attorney, which is to beretained in the attorney’s/law firm’srecord and if an issue arises that raisesthe question of whether or not theattorney acted appropriately, the Officeshould request a copy of the requisitepower of attorney form and actaccordingly.Response: Filing of a power ofattorney in an application file is notmandatory in that an attorney can act ina representative capacity pursuant to§ 1.34, although there are somelimitations, such as signing a terminaldisclaimer, change of correspondenceaddress, or an express abandonmentwithout filing a continuation, MPEP§ 402. Given the significantconsequences to such actions, the Officebelieves that such actions should onlybe undertaken pursuant to a power ofattorney that is of record in theapplication file.Comment 38: One comment suggestedthat the Office should take the positionthat when an applicant-assigneeexecutes a power of attorney, theattorney of record automatically has theright to act on behalf of the applicantassignee,including executing astatement under § 3.73(b). A contrarycomment stated that proposed§ 3.73(b)(2)(iii) should not beimplemented since it gives significantlymore authority to patent practitionersthan an assignee may otherwiseexplicitly authorize. The commentstated that only individuals who areauthorized to act on behalf of theassignee should be able to sign astatement under § 3.73(b).Response: The Office disagrees withthe position that the Office should nottreat a patent practitioner of record asVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00031 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6being authorized to act on behalf of theassignee. Section 3.73(d), as adopted inthis final rule, permits a patentpractitioner of record to sign a statementunder § 3.73(c) in patent matters. Aparty to a proceeding before the Officeis generally bound by the actions (oromissions) of his or her representative.See Huston v. Ladner, 973 F.2d 1564(Fed. Cir. 1992). There does not appearto be any reason to make an exceptionto this general rule for statements under§ 3.73(c). If a particular assignee hasappointed a practitioner via a power ofattorney document but does not wantthe practitioner to be able to sign a§ 3.73(c) statement, then such assigneecan inform the practitioner of such alimit on his or her authority. That,however, is a matter between theassignee and its chosen representative,and the Office is not the forum forresolving disputes between an applicantand his or her representative. See Ray v.Lehman, 55 F.3d 606 (Fed. Cir. 1995).Comment 39: One comment suggestedthat powers of attorney and statementsunder § 3.73(b) filed before September16, 2012 in patent applications,including provisional applications,should be grandfathered in andpermitted to be filed in pending andcontinuing applications.Response: The applicability datesection of the final rule identifies whichrules apply only to patent applicationsfiled on or after September 16, 2012.Section 3.73 applies only to patentapplications filed on or after September16, 2012, but it applies to any patentapplication filed on or after September16, 2012, even of that application claimsthe benefit of a provisional ornonprovisional application filed prior toSeptember 16, 2012.F. PCTComment 40: One comment statedthat the PCT rules should no longerrequire a statement that the inventor isthe applicant for the U.S. only. Adifferent carve out in PCT for U.S. lawshould be used for what remains uniqueto U.S. law, such as where the inventoris under a continuous duty to discloseknown material information.Response: The rules governingapplicants for international applications(§§ 1.421, 1.422, and 1.424) have beenamended consistent with the AIA to nolonger require that an inventor be anapplicant in the United States.Comment 41: One comment statedthat it is unclear whether proposed§ 1.48(k) only applies if an executeddeclaration submitted under PCT Rule4.17(iv) has been filed. The commentsuggested adding a second sentence toreference § 1.41(a)(4) for correction of

48806 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESinventorship of an internationalapplication entering the national stageunder 35 U.S.C. 371 in which no oathor declaration has been filed.Response: In response to thecomments, the Office has revised § 1.48in this final rule. Section 1.48(a) appliesto nonprovisional applications,including U.S. national stageapplications in which the basic nationalfee under 35 U.S.C. 41(a)(1)(F) has beenpaid. Under § 1.48(a), the requirementsfor correcting inventorship have beeneased, requiring only an applicationdata sheet setting forth the inventiveentity, a processing fee, and an oath ordeclaration as required by § 1.63 (orsubstitute statement in compliance with§ 1.64) for any actual inventor who hasnot executed such an oath ordeclaration. Furthermore, recognizingthat inventorship sometimes changes ina national stage application from thatoriginally indicated in the internationalphase, § 1.41(e) allows applicants to setinventorship in a U.S. national stageapplication without having to requestcorrection under § 1.48(a) by simplyincluding with the initial submissionunder 35 U.S.C. 371 an application datasheet in accordance with § 1.76 settingforth the correct inventive entity.Comment 42: One commentquestioned whether an application datasheet filed with a national stage entry,after the PCT filing date, is considereda supplemental application data sheet,or whether it was intended that thedocument be called an application datasheet, in which case § 1.76(a) should beamended to recite ‘‘or after payment ofthe basic national fee for a national stageentry under 35 U.S.C. 371.’’Response: The distinction between‘‘application data sheet’’ and‘‘supplemental application data sheet’’has been a source of confusion forapplicants. Accordingly, the Officerevised § 1.76 to eliminate‘‘supplemental application data sheet’’and simply refer to ‘‘application datasheet.’’ In this regard, § 1.76(c) in thisfinal rule, now indicates thatinformation in a previously submittedapplication data sheet, or the inventor’soath or declaration under § 1.63, § 1.64,or § 1.67, or otherwise of record, may becorrected or updated until payment ofthe issue fee by a new application datasheet providing corrected or updatedinformation, except that inventorshipchanges must comply with therequirements of § 1.48, foreign priorityand domestic benefit informationchanges must comply with §§ 1.55 and1.78, and correspondence addresschanges are governed by § 1.33(a).G. Reissue ApplicationsComment 43: One comment suggestedamending the title of § 1.172(‘‘Applicants’’) to include a reference to‘‘inventor’’ because the term ‘‘inventor’’is no longer synonymous with‘‘applicant.’’ One comment suggestedrevising the parenthetical in§ 1.172(b)(2)(ii) by replacing the conceptof the assignee executing the oath ordeclaration with the assignee providinga substitute statement as the applicantin the patent being reissued. Onecomment suggested that §§ 1.172 and1.175 be revised to provide for filing asubstitute statement, rather than an oathor declaration, in the permittedcircumstances.Response: The use of ‘‘applicant’’ inthe title of § 1.172 is a generic term thatwill cover assignees and inventors wheneither are the applicant. In this finalrule, § 1.172 has been revised to nolonger address execution of the oath ordeclaration. Section 1.175(c) providesfor filing a substitute statement inreissue applications by its reference to§ 1.64.Comment 44: One comment suggestedeliminating the requirement foridentifying whether a claim isbroadened under § 1.175(b). Thecomment asserted that the requirementis a complex legal issue in thatcancellation of one claim may constitutebroadening of another claim, and claimscope may be narrowed even thoughclaims are not amended, and such legaldetermination should be left to theexaminer and not to applicant as part ofan inventor’s declaration.Response: 35 U.S.C. 251(d) places atime limit on the filing of a broadeningreissue application. Accordingly,applicants must make a determinationas to whether a reissue application isbeing filed with a broadened claim.Applicants, in filing a reissueapplication, already have a goodindication as to whether the error thatrenders the patent wholly or partlyinoperative or invalid is one that isdriven by a need to broaden or narrowthe claims. Thus, focusing applicants’attention on whether a claim is beingbroadened should not be burdensomeon applicants, and is beneficial toexamination of the reissue application.Comment 45: One comment statedthat it is unclear why at least one errorbeing relied upon as the basis for reissuemust be identified in the declaration,and suggested that such an error couldbe identified by the attorney of record.Two comments questioned therequirement for a supplemental oath ordeclaration in a reissue applicationwhere all errors previously identifiedVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00032 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6are no longer relied upon, particularlyin view of the elimination of the‘‘without deceptive intent’’ languagefrom 35 U.S.C. 251.Response: The requirement to initiallyidentify the error being corrected in theoath or declaration has been retained asthe Office believes that the error beingused to support jurisdiction for a reissueshould be acknowledged by theinventor. In view of 35 U.S.C. 115(h)(2),the Office will permit the practitioner toidentify a replacement error where thefirst error is no longer being corrected.The retention of a requirement, albeit bypractitioner statement rather than bysupplemental oath or declaration, toidentify an error being corrected (wherethe initially identified error beingcorrected is no longer being corrected)is deemed necessary so that the filerecord clearly establishes jurisdictionfor the reissue. It should be noted,however, that where the original oath ordeclaration does not comply with§ 1.175, the Office will require acompliant oath or declaration, and apractitioner statement will not besufficient.H. Application Data Sheet (§ 1.76)1. Domestic Benefit and Foreign PriorityClaimsComment 46: One comment suggestedthat the Office construe an identificationof 35 U.S.C. 120 benefit information inan application data sheet as aninstruction to amend the application toinclude that information if it is notalready present, or to replace suchinformation in the specification if it isinconsistent.Response: An application data sheetis part of the application. See § 1.76(a).Comment 47: One commentquestioned whether applications filedbefore September 16, 2012, would begrandfathered in with regard to how aclaim for foreign priority or domesticbenefit must be made. The commentrequested clarification as to whether therequirement that all priority and benefitclaims be in an application data sheet orsupplemental application data sheetdepends on the filing date of theapplication or on the date of filing of theforeign priority or domestic benefitclaim.Response: Applications filed on orafter September 16, 2012, must complywith §§ 1.55 or 1.78 as amended by thisfinal rule. Applications filed beforeSeptember 16, 2012, need not complywith §§ 1.55 or 1.78 as amended by thisfinal rule (but would need to complywith §§ 1.55 or 1.78 as previously ineffect).

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48807sroberts on DSK5SPTVN1PROD with RULESComment 48: One commentquestioned what information the Officewould enter into the application filerecord if, on the same day (e.g.,application filing date), a priority claimis made both in the application datasheet and the first paragraph of thespecification, but the informationbetween the two varies, e.g., one has atypographical error in the priority dateor priority document number.Response: For applications filed on orafter September 16, 2012, a foreignpriority claim under § 1.55 or domesticbenefit claim under § 1.78 made in thefirst paragraph of a specification wouldnot be an effective priority or benefitclaim and the Office would process thepriority claim based on the informationin the application data sheet.2. Form RequirementsComment 49: One comment suggestedthat the application data sheet be treatedas authoritative in all cases, even wherethere are inconsistencies between theapplication data sheet and the oath ordeclaration, and § 1.76(d) deleted so thatthe most recent application data sheetwould always control.Response: Section 1.76(d)(1)(ii)provides that the most recentsubmission of an application data sheetwill govern in most instances, exceptthat the naming of the inventorship isgoverned by § 1.41 and changes toinventorship or the names of theinventors is governed by § 1.48. Section1.76(d)(2) provides that the applicationdata sheet will govern when theinconsistent information is supplied atthe same time by a designation ofcorrespondence address or theinventor’s oath or declaration.Comment 50: One comment believedthat consideration of the applicationdata sheet as part of the applicationcauses a practitioner to engage inmisconduct under § 10.23. Thecomment asserted that the Office statedthat the application data sheet must notbe signed by an inventor and that theapplication data sheet is generally notreviewed by an inventor executing thedeclaration. Thus, a practitionersubmitting an application data sheetwith an application, with an alreadyexecuted declaration, would havealtered the application in violation of§ 10.23(c)(11), which states that conductwhich constitutes a violation includes‘‘filing or causing to be filed anapplication containing any materialalteration made in the applicationpapers after the signing of theaccompanying oath or declarationwithout identifying the alteration at thetime of filing the application papers.’’Response: In response to thecomment, § 1.52(c) now provides that analteration of the application papers maybe made after the signing of theinventor’s oath or declaration providedthe statements made in the oath ordeclaration remain applicable. Thus, anapplication data sheet signed after theexecution of the oath or declarationwould be a permitted alteration whereany change brought about by theapplication data sheet does not alter theapplicability of the statements in theoath or declaration. Additionally, thereis no prohibition on the inventive entitysigning an application data sheet, butthe inventive entity would not need tosign an application data sheet if thedocument is signed by a practitioner.Section 10.23(c)(11) has been removedand reserved in view of the change to§ 1.52(c).Comment 51: One comment suggestedthat a new section be included in theapplication data sheet as a method ofidentifying the ‘‘applicant,’’ which maybe the assignee, obligated assignee, or aperson who otherwise shows sufficientproprietary interest. One commentsuggested that a method be provided foridentifying the applicant (inventor,assignee, obligated assignee, or someother person or entity) in theapplication data sheet with provisionsregarding the information required toidentify the applicant.Response: Section 1.76(b)(7) has beenretitled ‘‘Applicant Information’’ and isidentified as including assignees,persons to whom the inventor is underan obligation to assign, or persons whootherwise show sufficient proprietaryinterest in the matter. No furtherinformation in the ‘‘ApplicantInformation’’ section, other than theidentification of the applicant (i.e.,name and address), is needed.Comment 52: One commentsupported the proposed change to § 1.76in amended form. The commentasserted that the requirement that asupplemental application data sheetcontain all the section headings and allthe appropriate data for each sectionheading is burdensome on applicantsand on the Office. The comment notedthat often a supplemental applicationdata sheet changes a single word orsingle number or single line of text inone field of the seven section headings.Reproduction by applicant and scouringof text by the Office would be limitedif only the change were provided. Sincesupplemental application data sheetsare hand-keyed rather than scanned andconverted into text by optical characterrecognition, Office personnel must wadethrough large amounts of unchangedinformation to try to catch one or twoVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00033 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6changed items. One comment stated thatwhen submitting a supplementalapplication data sheet to correctinformation in the file, the applicantshould be able to file the applicationdata sheet form (PTO/SB/14) and showonly those changes being requestedwithout strike-through and underlining.Response: Where information in anapplication data sheet is changed withsubmission of a later-submittedapplication data sheet, only theappropriate data for each sectionheading to be changed need be filled inidentifying the change in informationwith appropriate markings. Someinformation, such as benefit or priorityclaims, can be extensive in nature andwould be burdensome for the Office toidentify the specific change without amark-up. Furthermore, some benefitclaims contain a chain of applicationsand the entire chain needs to beprovided to ensure that the informationis accurate.Comment 53: One commentquestioned whether a supplementalapplication data sheet that is the firstfiled application data sheet must beunderlined in its entirety or whetheronly the information that is differentfrom the information that the Officecurrently has in its records must beunderlined. One commentrecommended that § 1.76 be simplifiedas it is extensive and burdensome. Thecomment stated that it is not easy toprepare a supplemental application datasheet since the Office does not providea supplemental application data sheetform.Response: In response to thecomments, the Office is discarding thenotion of the ‘‘supplemental’’application data sheet. The first filedapplication data sheet would not needto contain any markings unlessinformation is being updated orcorrected. Additionally, an applicationdata sheet included with an initialsubmission under 35 U.S.C. 371 wouldnot need to contain any markings. Anapplication data sheet that is updatingor correcting information must identifythe information that is being changedwith underlining for insertions, andstrike-through or brackets for textremoved.I. Miscellaneous Rules1. Mail Stop (§ 1.1(e))Comment 54: One comment suggestedthat the Office not go forward with theproposed change of a mail stop from‘‘Mail Stop Patent Ext.’’ to ‘‘Mail StopHatch-Waxman PTE.’’ The commentstated that the change incurs trainingcosts on both the Office and applicants

48808 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESwith no apparent benefit to eitherapplicants or the Office, particularly asthe Office does not provide the actualunderlying reason for the proposedchange.Response: Section 1.1(e) is beingrevised to reflect the current mail stopfor applications under 35 U.S.C. 156 forpatent term extension and additionalcorrespondence regarding applicationsfor patent term extension under 35U.S.C. 156. The current mail stop forsuch applications and correspondenceis ‘‘Mail Stop Hatch-Waxman PTE.’’ TheOffice published a notice including thisnew mail stop on November 21, 2006.See Mailing and Hand Carry Addressesfor the United States Patent andTrademark Office, 1312 Off. Gaz. Pat.Office 107 (Nov. 21, 2006). The mailstop designated as ‘‘Mail Stop PatentExt.’’ is for applications for patent termextension or adjustment under 35 U.S.C.154 and any communication relatingthereto (except when being mailedtogether with the issue fee). The twodifferent mail stops lead to moreefficient processing of the differenttypes of applications andcorrespondence for patent termextension and adjustment sincedifferent areas of the Office process thedifferent correspondence. Thus, § 1.1(e)has been revised to reflect the correctmail stop.2. Signatures (§ 1.4)Comment 55: Several commentsquestioned whether proposed § 1.4(e)would prevent the use of credit cardpayments with electronic submissions,such as EFS-Web, EPAS, the Office’sRevenue Accounting and Management(RAM) system, the Office’s Order EntryManagement System (OEMS), and theCentral Fax Number. Another commentquestioned whether the proposedchange means that patentees will not beable to pay maintenance fees onlinewith a credit card.Response: Section 1.4(e) does notprevent the use of credit card paymentswith electronic submissions via theOffice’s electronic filing systems such asEFS-Web. Section 1.4(e) has beenrevised to require an originalhandwritten signature personally signedin permanent dark ink or its equivalentfor payments by credit cards where thepayment is not being made via theOffice’s various electronic filingsystems. An original handwrittensignature is only required when thecredit card payment is being made inpaper, and thus the Office’s Credit CardPayment Form, PTO–2038, or anequivalent, is being used. The creditcard payment form is not required (andshould not be used) when making acredit card payment via EFS-Web orother electronic filing systems. Asubmission via the Central FacsimileNumber is not considered an electronicsubmission and thus credit cardpayments being made by facsimilesubmission to the Central FacsimileNumber require an original handwrittensignature.Comment 56: One comment statedthat there are various rules which seemto require an original signature andrequested that the Office clarify thatsuch ‘‘original signatures’’ include ‘‘esignatures.’’Response: The term ‘‘original’’ is usedin connection with handwrittensignatures in § 1.4(d)(1) and does notinclude S-signatures. Section 1.4(e)specifies when an original handwrittensignature is required. A handwrittensignature can be an original or a copythereof, except when an originalhandwritten signature is required, as setforth in § 1.4(e). See MPEP § 502.02.Unless § 1.4(e) is applicable, an S-signature, as provided for in § 1.4(d)(2),may be used.3. Juristic Entity (§ 1.31)Comment 57: One comment statedthat proposed § 1.33(f) seems to allow ajuristic entity to sign documents such asterminal disclaimers and statementsunder § 3.73(b) because of the language‘‘unless otherwise specified,’’ which iscontrary to the preamble discussionwhich stated that all papers submittedon behalf of a juristic entity must besigned by a patent practitioner.Response: Section 1.33(b)(3) containsthe language of proposed § 1.33(f).Section 3.73(c) now contains theprovisions for establishing ownership ina patent matter including the requiredstatement. Section 1.321 provides for aterminal disclaimer to be signed by theapplicant or an attorney or agent ofrecord. Thus, an assignee who is theapplicant may sign a terminaldisclaimer. Section 3.73(d) provides fora statement under § 3.73(c) to be signedby a person authorized to act on behalfof the assignee.4. Correspondence Address (§ 1.33)Comment 58: One comment suggestedthat § 1.33(a) be amended to state thatthe correspondence address must beprovided in an application data sheetsince the Office’s application data sheetform (PTO/SB/14) already has a field forcorrespondence address.Response: The Office encouragesapplicants to provide an applicationdata sheet containing a correspondenceaddress, but applicants may alsoprovide a correspondence address inanother paper (e.g., a transmittal letter)VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00034 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6accompanying the application,particularly where an application datasheet is not being filed with theapplication. The Office needs to be ableto communicate with applicants evenwhen an application data sheet is notsubmitted.Comment 59: One comment suggestedmaintaining the language of current§ 1.33(a) to state that where more thanone correspondence address is specifiedin a single paper or multiple paperssubmitted on one day, the Office willuse a Customer Number for thecorrespondence address over a typedcorrespondence address. The commentindicated that the Office has used adifferent correspondence where aCustomer Number ‘‘has been properlypresented in the filings associated withan application.’’Response: The Office will generallyselect the address associated with aCustomer Number over a typedcorrespondence address when morethan one correspondence address isspecified in a paper or papers submittedon the same day. The Office, however,prefers not to be required by rule toselect the Customer Number since theremay be situations where it is clear thatthe Customer Number given is not theintended or current correspondenceaddress. Thus, the Office requires someflexibility in this regard.Comment 60: One comment suggestedthat to ensure prompt processing ofcorrespondence addresses, apractitioner using private PAIR shouldhave the ability to input a new/correctcorrespondence address which becomeseffective immediately upon submission.Response: The Office is currentlyconsidering changes to the PAIR systemthat may include the ability of a patentpractitioner of record to change thecorrespondence address in anapplication. The Office would notify thepublic of any changes to the PAIRsystem via a notice on the Office’sInternet web site.5. Person Making Declaration (§ 1.64)Comment 61: One comment suggestedthat: (1) § 1.64(a) which states that thedeclaration ‘‘must be made by all of theactual inventors, except as provided forin §§ 1.42, 1.43, 1.47, or 1.67,’’ berevised to employ the statutory languageof 35 U.S.C. 115, that ‘‘each individualwho is the inventor or a joint inventorof a claimed invention;’’ (2) the portionof § 1.64(b) that states ‘‘[i]f the personmaking the oath or declaration is not theinventor, the declaration shall state* * * ’’ should be removed as only aninventor or joint inventor may executean oath or declaration; and (3) therequirement for the residence of non-

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48809sroberts on DSK5SPTVN1PROD with RULESinventors who sign should be removed.Another comment suggested that § 1.64be amended to reflect that a single oathor declaration document is not requiredand to eliminate the requirement for theresidence and mailing address of thelegal representative.Response: In response to thecomments, the provisions of former§ 1.64 have been eliminated. Section1.64 now provides for a substitutestatement in lieu of an oath ordeclaration and requires the residenceand mailing of address of the personsigning the substitute statement. TheOffice needs this information foridentification purposes and to be able tocommunicate with the person executingthe substitute statement in the eventthat this becomes necessary.6. Noncompliant Declarations (§ 1.67)Comment 62: One comment statedthat proposed § 1.67 included a criticalmisconception that a declaration may bemade by someone other than theinventor. Additionally, the commentstated that it is unclear how a deficiencyor inaccuracy relating to fewer than allthe applicants could be cured by aninventor’s declaration. Anothercomment stated that § 1.67 should beamended to reflect that a single oath ordeclaration document is not required.Response: Initially, it should be notedthat § 1.67 is directed to supplementaloaths or declarations and provides amechanism for applicants to correctdeficiencies or inaccuracies present inan earlier-filed inventor’s oath ordeclaration. Section 1.67, in this finalrule, prohibits the Office from requiringa person who has executed an oath ordeclaration that is in compliance with35 U.S.C. 115 and § 1.63 or § 1.162 toprovide an additional inventor’s oath ordeclaration for the application.However, the Office is not prohibitedfrom requiring a new oath or declarationin compliance with 35 U.S.C. 115 and§ 1.63 where the oath or declaration thatwas submitted does not comply with 35U.S.C. 115 and § 1.63. The Office notesthat former § 1.47(b) permitted anassignee to sign the oath or declarationfor the nonsigning inventor where noinventors were available. The assigneewould simply make the statements inthe oath or declaration on informationand belief. See former § 1.64(b). Section1.63(f), in this final rule, provides thatany reference to the inventor’s oath ordeclaration in this chapter means theoaths, declarations, or substitutestatements that have been collectivelyexecuted by or with respect to all of thejoint inventors. Accordingly, a singleoath or declaration document is notrequired under § 1.63 or § 1.67. Since§ 1.63 is amended to only require thatthe oath or declaration identify theinventor or joint inventor executing theoath or declaration rather, thanidentifying the entire inventive entity,§ 1.67 no longer refers to a deficiency orinaccuracy relating to fewer than all ofthe inventors or applicants.7. Statement Under § 3.73Comment 63: One commentsupported the proposed change to§ 3.73, but suggested a modification of§ 3.73(b). The comment noted thedifficulties practitioners face inattempting to reproduce reel and framenumbers, including time, effort and thepotential for typographical errors fromthe hand-keying required when formPTO/SB/96 is completed, and the needfor Office personnel to check theinformation character by character. Thecomment suggested that these effortscan be limited by permitting attachmentof a copy of the Abstract of Title orNotice of Recordation where theycontain the reel and frame numbers.Response: Section 3.73(c)(1)(i)requires documentary evidence of achain of title from the original owner tothe assignee. A copy of an executedassignment is only one example of thetype of documentary evidence that maybe submitted. Other types ofdocumentary evidence may besubmitted. An Abstract of Title orNotice of Recordation would beinsufficient documentary evidence sinceany person can submit documents forrecordation to Assignment RecordationBranch, therefore an Abstract of Titlemay list extraneous or erroneousdocuments unrelated to the chain oftitle.Comment 64: One comment statedthat, with respect to proposed§ 3.73(c)(3), the applicants should beallowed to also file a copy of a statementunder § 3.73(b) that was originally filedin a provisional application in anonprovisional application that claimsbenefit of the provisional application.Response: Section 3.73 does notprovide for the filing of a copy of astatement under § 3.73(c) in anonprovisional application that wasoriginally filed in a prior application,such as a provisional application whosebenefit is being claimed in thenonprovisional application. Generally,there is no need to file a § 3.73(c)statement in a provisional applicationand such statements are not usuallyfiled in provisional applications as suchapplications are not examined and donot undergo prosecution. Furthermore,where an assignee has filed such astatement in the provisional application,the assignee would presumably be theVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00035 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6applicant filing the nonprovisionalapplication. An assignee who is theapplicant who filed the applicationneed not to file a § 3.73(c) statement.Comment 65: One comment statedthat, with respect to proposed§ 3.73(c)(3), if a statement under§ 3.73(b) in the earlier application isfrom an assignee, it should not berequired that the inventorship of thecontinuing application be the same as orless than that of the earlier application,if the newly added inventors have alsoassigned, or are under an obligation toassign, to the same assignee and theassignment is recorded at the Office.Response: Section 3.73 does notprovide for the filing of a copy of astatement under § 3.73(c) in acontinuing application that wasoriginally filed in the prior application.Where an assignee has filed a statementunder § 3.73(c) in a prior application,the assignee may file the continuingapplication as the applicant and wouldnot need to file a § 3.73(c) statement.Comment 66: One comment suggestedthat the Office simplify the processrelating to the power of attorney from anassignee such that the power of attorneydocument(s) may be filed concurrentlywith the filing of patent applicationdocuments. The comment noted that theOffice’s form (PTO/SB/96) requiresentry of specific application data whichare only available after filing of thepatent application.Response: An assignee who is theapplicant will not need to comply withthe procedure in §§ 3.71 and 3.73,including filing a § 3.73(c) statement(e.g., Form PTO/SB/96). The assigneewill only need to identify him or herselfas the applicant and submit a power ofattorney. Thus, the assignee will be ableto file the power of attorneydocument(s) concurrently with thepatent application documents eventhough he or she does not have anapplication number for the application.An assignee who did not file theapplication and thus is not the originalapplicant would need to file a § 3.73(c)statement to become the applicant andtake over prosecution of the application.See §§ 1.46(c), 3.71, and 3.73.8. Lack of Deceptive IntentComment 67: One comment expressedconcern about the deletion of the ‘‘lackof deceptive intent’’ clause. Onecomment suggested thatnotwithstanding the acknowledgementthat willful false statements arepunishable by fine or imprisonment,keeping the ‘‘without deceptiveintention’’ in the statute may be a goodidea. The comment noted that there maybe semantic differences between ‘‘false

48810 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESstatement’’ and ‘‘deceptive intention’’that retaining the language may helpclarify.Response: Section 20 of the AIAamended 35 U.S.C. 116, 184, 251, and256 (as well as other statutes that do notrequire corresponding rule changes) toeliminate the ‘‘without any deceptiveintention’’ clauses. The changes to therules at issue simply implement thechanges to 35 U.S.C. 116, 184, 251, and256 in section 20 of the AIA. Asdiscussed previously, this should not betaken as an endorsement for applicantsand inventors to act with ‘‘deceptiveintention’’ in proceedings before theOffice, as 35 U.S.C. 115(i) requires thatany declaration or statement filedpursuant to 35 U.S.C. 115 contain anacknowledgement that any willful falsestatement made in the declaration orstatement is punishable under 18 U.S.C.1001 by fine or imprisonment of notmore than five (5) years, or both.Rulemaking ConsiderationsA. Administrative Procedure ActThe primary changes in this final ruleimplement the inventor’s oath ordeclaration provisions of the AIA. Thisfinal rule changes the rules of practicethat concern the procedure for applyingfor a patent, namely, how an applicationis to identify the applicant for patent,the statements required in the inventor’soath or declaration required by 35U.S.C. 115 for a patent application(including the oath or declaration for areissue application), the manner ofpresenting claims for priority to or thebenefit of prior-filed applications under35 U.S.C. 119, 120, 121, or 365, and theprocedures for prosecution of anapplication by an assignee. The changesin this final rule do not alter thesubstantive criteria of patentability.Therefore, the changes in this final ruleinvolve rules of agency practice andprocedure, and/or interpretive rules. SeeBachow Commc’ns., Inc. v. FCC, 237F.3d 683, 690 (D.C. Cir. 2001) (rulesgoverning an application process areprocedural under the AdministrativeProcedure Act); Inova Alexandria Hosp.v. Shalala, 244 F.3d 342, 350 (4th Cir.2001) (rules for handling appeals wereprocedural where they did not changethe substantive standard for reviewingclaims); 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 astatute is interpretive). Accordingly,prior notice and opportunity for publiccomment are not required pursuant to 5U.S.C. 553(b) or (c) (or any other law).See Cooper Techs. Co. v. Dudas, 536F.3d 1330, 1336–37 (Fed. Cir. 2008)(stating that 5 U.S.C. 553, and thus 35U.S.C. 2(b)(2)(B), does not require noticeand comment rulemaking for‘‘interpretative rules, general statementsof policy, or rules of agencyorganization, procedure, or practice.’’)(quoting 5 U.S.C. 553(b)(A)). The Office,however, published proposed changesand a Regulatory Flexibility Actcertification for comment as it soughtthe benefit of the public’s views on theOffice’s proposed implementation ofthis provision of the AIA.B. Regulatory Flexibility ActAs prior notice and an opportunity forpublic comment are not requiredpursuant to 5 U.S.C. 553 or any otherlaw, neither a regulatory flexibilityanalysis nor a certification under theRegulatory Flexibility Act (5 U.S.C. 601et seq.) is required. See 5 U.S.C. 603.In addition, for the reasons set forthherein, the Deputy General Counsel forGeneral Law of the United States Patentand Trademark Office has certified tothe Chief Counsel for Advocacy of theSmall Business Administration thatchanges in this final rule will not havea significant economic impact on asubstantial number of small entities. See5 U.S.C. 605(b).This final rule changes the rules ofpractice to implement sections 4 and 20of the AIA, which provide changes tothe inventor’s oath or declaration andthe filing of an application by theassignee as the applicant. The primaryimpact of the changes in this final ruleis the streamlining of the requirementsfor oaths and declarations and thesimplification of the filing of anapplication by the assignee as theapplicant. The burden to all entities,including small entities, imposed by thechanges in this final rule is significantlyless than the burden imposed by theformer regulations in most situations,and is no more than a minor additionto that of the former regulations in anysituation. The change to the manner ofpresenting claims for priority to or thebenefit of prior-filed applications under35 U.S.C. 119, 120, 121, or 365 will nothave a significant economic impact ona substantial number of small entities asan application data sheet is easy toprepare and use, and the majority ofpatent applicants already submit anapplication data sheet with the patentapplication. The change to reissue oathsor declarations will not have asignificant economic impact on asubstantial number of small entities asreissue is sought by the patentee forfewer than 1,200 of the 1.2 millionpatents in force each year, and a reissueapplicant already needs to knowwhether claims are being broadened toVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00036 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6comply with the requirements of 35U.S.C. 251. The change to theprocedures for prosecution of anapplication by an assignee will not havea significant economic impact on asubstantial number of small entities asit is rare for a juristic entity to attemptto prosecute a patent application pro se.Therefore, the changes in this final rulewill not have a significant economicimpact on a substantial number of smallentities.C. Executive Order 12866 (RegulatoryPlanning and Review)This rulemaking has been determinedto be not significant for purposes ofExecutive Order 12866 (Sept. 30, 1993).D. Executive Order 13563 (ImprovingRegulation and Regulatory Review)The Office has complied withExecutive Order 13563. Specifically, theOffice has, to the extent feasible andapplicable: (1) Made a reasoneddetermination that the benefits justifythe costs of the rule; (2) tailored the ruleto impose the least burden on societyconsistent with obtaining the regulatoryobjectives; (3) selected a regulatoryapproach that maximizes net benefits;(4) specified performance objectives;(5) identified and assessed availablealternatives; (6) involved the public inan open exchange of information andperspectives among experts in relevantdisciplines, affected stakeholders in theprivate sector and the public as a whole,and provided online access to therulemaking docket; (7) attempted topromote coordination, simplificationand harmonization across governmentagencies and identified goals designedto promote innovation; (8) consideredapproaches that reduce burdens andmaintain flexibility and freedom ofchoice for the public; and (9) ensuredthe objectivity of scientific andtechnological information andprocesses.E. Executive Order 13132 (Federalism)This rulemaking does not containpolicies with federalism implicationssufficient to warrant preparation of aFederalism Assessment under ExecutiveOrder 13132 (Aug. 4, 1999).F. Executive Order 13175 (TribalConsultation)This rulemaking will not: (1) Havesubstantial direct effects on one or moreIndian tribes; (2) impose substantialdirect compliance costs on Indian tribalgovernments; or (3) preempt tribal law.Therefore, a tribal summary impactstatement is not required underExecutive Order 13175 (Nov. 6, 2000).

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48811sroberts on DSK5SPTVN1PROD with RULESG. Executive Order 13211 (EnergyEffects)This rulemaking is not a significantenergy action under Executive Order13211 because this rulemaking is notlikely to have a significant adverse effecton the supply, distribution, or use ofenergy. Therefore, a Statement of EnergyEffects is not required under ExecutiveOrder 13211 (May 18, 2001).H. Executive Order 12988 (Civil JusticeReform)This rulemaking meets applicablestandards to minimize litigation,eliminate ambiguity, and reduce burdenas set forth in sections 3(a) and 3(b)(2)of Executive Order 12988 (Feb. 5, 1996).I. Executive Order 13045 (Protection ofChildren)This rulemaking does not concern anenvironmental risk to health or safetythat may disproportionately affectchildren under Executive Order 13045(Apr. 21, 1997).J. Executive Order 12630 (Taking ofPrivate Property)This rulemaking will not effect ataking of private property or otherwisehave taking implications underExecutive Order 12630 (Mar. 15, 1988).K. Congressional Review ActUnder the Congressional Review Actprovisions of the Small BusinessRegulatory Enforcement Fairness Act of1996 (5 U.S.C. 801 et seq.), the UnitedStates Patent and Trademark Office willsubmit a report containing this final ruleand other required information to theUnited States Senate, the United StatesHouse of Representatives, and theComptroller General of the GovernmentAccountability Office. The changes inthis final rule are not expected to resultin an annual effect on the economy of100 million dollars or more, a majorincrease in costs or prices, or significantadverse effects on competition,employment, investment, productivity,innovation, or the ability of UnitedStates-based enterprises to competewith foreign-based enterprises indomestic and export markets. Therefore,this final rule is not a ‘‘major rule’’ asdefined in 5 U.S.C. 804(2).L. Unfunded Mandates Reform Act of1995The changes in this rulemaking do notinvolve a Federal intergovernmentalmandate that will result in theexpenditure by State, local, and tribalgovernments, in the aggregate, of 100million dollars (as adjusted) or more inany one year, or a Federal private sectormandate that will result in theexpenditure by the private sector of 100million dollars (as adjusted) or more inany one year, and will not significantlyor uniquely affect small governments.Therefore, no actions are necessaryunder the provisions of the UnfundedMandates Reform Act of 1995. See 2U.S.C. 1501 et seq.M. National Environmental Policy ActThis rulemaking will not have anyeffect on the quality of environment andis thus categorically excluded fromreview under the NationalEnvironmental Policy Act of 1969. See42 U.S.C. 4321 et seq.N. National Technology Transfer andAdvancement ActThe requirements of section 12(d) ofthe National Technology Transfer andAdvancement Act of 1995 (15 U.S.C.272 note) are not applicable because thisrulemaking does not contain provisionswhich involve the use of technicalstandards.O. Paperwork Reduction ActThis rulemaking involves informationcollection requirements which aresubject to review by the Office ofManagement and Budget (OMB) underthe Paperwork Reduction Act of 1995(44 U.S.C. 3501 et seq.). The collectionof information involved in thisrulemaking has been reviewed andpreviously approved by OMB underOMB Control Numbers 0651–0032 and0651–0035. The primary impact of thechanges in this notice is thestreamlining of the requirements foroaths and declarations and thesimplification of the filing of anapplication by the assignee when aninventor cannot or will not execute anoath or declaration. The Office is notresubmitting an information collectionpackage to OMB for its review andapproval because the changes in thisrulemaking do not change patent fees orchange the information collectionrequirements (the estimated number ofrespondents, time per response, totalannual respondent burden hours, ortotal annual respondent cost burden)associated with the informationcollections approved under OMBControl Numbers 0651–0032 and 0651–0035.Notwithstanding any other provisionof law, no person is required to respondto, nor shall a person be subject to apenalty for failure to comply with, acollection of information subject to therequirements of the PaperworkReduction Act, unless that collection ofinformation displays a currently validOMB control number.VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00037 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6List of Subjects37 CFR Part 1Administrative practice andprocedure, Inventions and patents,Reporting and recordkeepingrequirements, Small businesses.37 CFR Part 3Administrative practice andprocedure, Patents, Trademarks37 CFR Part 5Classified information, Foreignrelations, Inventions and patents.37 CFR Part 10Administrative practice andprocedure, Inventions and patents,Lawyers, Reporting and recordkeepingrequirements.37 CFR Part 41Administrative practice andprocedure, Inventions and patents,Lawyers.For the reasons set forth in thepreamble, 37 CFR parts 1, 3, 5, 10 and41 are amended as follows:PART 1—RULES OF PRACTICE INPATENT CASES■ 1. The authority citation for 37 CFRPart 1 continues to read as follows:Authority: 35 U.S.C. 2(b)(2).■ 2. Section 1.1 is amended by revisingparagraph (e) to read as follows:§ 1.1 Addresses for non-trademarkcorrespondence with the United StatesPatent and Trademark Office.* * * * *(e) Patent term extension. Allapplications for extension of patent termunder 35 U.S.C. 156 and anycommunications relating theretointended for the United States Patentand Trademark Office should beadditionally marked ‘‘Mail Stop Hatch-Waxman PTE.’’ When appropriate, thecommunication should also be markedto the attention of a particularindividual, as where a decision has beenrendered.* * * * *■ 3. Section 1.4 is amended by revisingparagraph (e) to read as follows:§ 1.4 Nature of correspondence andsignature requirements.* * * * *(e) The following correspondencemust be submitted with an originalhandwritten signature personally signedin permanent dark ink or its equivalent:(1) Correspondence requiring aperson’s signature and relating toregistration to practice before the Patent

48812 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESand Trademark Office in patent cases,enrollment and disciplinaryinvestigations, or disciplinaryproceedings; and(2) Payments by credit cards wherethe payment is not being made via theOffice’s electronic filing systems.* * * * *■ 4. Section 1.5 is amended by revisingparagraph (a) to read as follows:§ 1.5 Identification of patent, patentapplication, or patent-related proceeding.(a) No correspondence relating to anapplication should be filed prior toreceipt of the application number fromthe Patent and Trademark Office. Whena letter directed to the Patent andTrademark Office concerns a previouslyfiled application for a patent, it mustidentify on the top page in aconspicuous location, the applicationnumber (consisting of the series codeand the serial number; e.g., 07/123,456),or the serial number and filing dateassigned to that application by thePatent and Trademark Office, or theinternational application number of theinternational application. Anycorrespondence not containing suchidentification will be returned to thesender where a return address isavailable. The returned correspondencewill be accompanied with a cover letterwhich will indicate to the sender that ifthe returned correspondence isresubmitted to the Patent andTrademark Office within two weeks ofthe mail date on the cover letter, theoriginal date of receipt of thecorrespondence will be considered bythe Patent and Trademark Office as thedate of receipt of the correspondence.Applicants may use either theCertificate of Mailing or Transmissionprocedure under § 1.8 or the ExpressMail procedure under § 1.10 forresubmissions of returnedcorrespondence if they desire to havethe benefit of the date of deposit in theUnited States Postal Service. If thereturned correspondence is notresubmitted within the two-weekperiod, the date of receipt of theresubmission will be considered to bethe date of receipt of thecorrespondence. The two-week periodto resubmit the returnedcorrespondence will not be extended. Inaddition to the application number, allletters directed to the Patent andTrademark Office concerningapplications for patent should also statethe name of the first listed inventor, thetitle of the invention, the date of filingthe same, and, if known, the group artunit or other unit within the Patent andTrademark Office responsible forconsidering the letter and the name ofthe examiner or other person to whichit has been assigned.* * * * *■ 5. Section 1.9 is amended by revisingparagraphs (a) and (b) to read as follows:§ 1.9 Definitions.(a)(1) A national application as usedin this chapter means a U.S. applicationfor patent which was either filed in theOffice under 35 U.S.C. 111, or aninternational application filed under thePatent Cooperation Treaty in which thebasic national fee under 35 U.S.C.41(a)(1)(F) has been paid.(2) A provisional application as usedin this chapter means a U.S. nationalapplication for patent filed in the Officeunder 35 U.S.C. 111(b).(3) A nonprovisional application asused in this chapter means a U.S.national application for patent whichwas either filed in the Office under 35U.S.C. 111(a), or an internationalapplication filed under the PatentCooperation Treaty in which the basicnational fee under 35 U.S.C. 41(a)(1)(F)has been paid.(b) An international application asused in this chapter means aninternational application for patent filedunder the Patent Cooperation Treatyprior to entering national processing atthe Designated Office stage.* * * * *■ 6. Section 1.12 is amended by revisingparagraphs (b) and (c)(2) to read asfollows:§ 1.12 Assignment records open to publicinspection.* * * * *(b) Assignment records, digests, andindexes relating to any pending orabandoned patent application, which isopen to the public pursuant to § 1.11 orfor which copies or access may besupplied pursuant to § 1.14, areavailable to the public. Copies of anyassignment records, digests, and indexesthat are not available to the public shallbe obtainable only upon writtenauthority of an inventor, the applicant,the assignee or an assignee of anundivided part interest, or a patentpractitioner of record, or upon ashowing that the person seeking suchinformation is a bona fide prospective oractual purchaser, mortgagee, or licenseeof such application, unless it shall benecessary to the proper conduct ofbusiness before the Office or asprovided in this part.(c) * * *(2) Include written authority grantingaccess to the member of the public tothe particular assignment records froman inventor, the applicant, the assigneeor an assignee of an undivided partVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00038 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6interest, or a patent practitioner ofrecord.* * * * *■ 7. Section 1.14 is amended by revisingparagraphs (c) and (f) to read as follows;§ 1.14 Patent applications preserved inconfidence.* * * * *(c) Power to inspect a pending orabandoned application. Access to anapplication may be provided to anyperson if the application file isavailable, and the application containswritten authority (e.g., a power toinspect) granting access to such person.The written authority must be signedby:(1) The applicant;(2) A patent practitioner of record;(3) The assignee or an assignee of anundivided part interest;(4) The inventor or a joint inventor; or(5) A registered attorney or agentnamed in the papers accompanying theapplication papers filed under § 1.53 orthe national stage documents filedunder § 1.495, if a power of attorney hasnot been appointed under § 1.32.* * * * *(f) Notice to inventor of the filing ofan application. The Office may publishnotice in the Official Gazette as to thefiling of an application on behalf of aninventor by a person who otherwiseshows sufficient propriety interest inthe matter.* * * * *■ 8. Section 1.16 is amended by revisingparagraph (f) to read as follows:§ 1.16 National application filing, search,and examination fees.* * * * *(f) Surcharge for filing any of the basicfiling fee, the search fee, theexamination fee, or the inventor’s oathor declaration on a date later than thefiling date of the application, exceptprovisional applications:By a small entity (§ 1.27(a)) $65.00By other than a small entity $130.00* * * * *■ 9. Section 1.17 is amended by revisingparagraphs (g) and (i) to read as follows:§ 1.17 Patent application andreexamination processing fees.* * * * *(g) For filing a petition under one ofthe following sections which refers tothis paragraph: $200.00.

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48813sroberts on DSK5SPTVN1PROD with RULES§ 1.12—for access to an assignmentrecord.§ 1.14—for access to an application.§ 1.46—for filing an application on behalfof an inventor by a person who otherwiseshows sufficient proprietary interest in thematter.§ 1.59—for expungement of information.§ 1.103(a)—to suspend action in anapplication.§ 1.136(b)—for review of a request forextension for extension of time when theprovisions of § 1.136(a) are not available.§ 1.295—for review of refusal to publish astatutory invention registration.§ 1.296—to withdraw a request forpublication of a statutory inventionregistration filed on or after the date thenotice of intent to publish issued.§ 1.377—for review of decision refusing toaccept and record payment of amaintenance fee filed prior to expiration ofa patent.§ 1.550(c)—for patent owner requests forextension of time in ex parte reexaminationproceedings.§ 1.956—for patent owner requests forextension of time in inter partesreexamination proceedings.§ 5.12—for expedited handling of a foreignfiling license.§ 5.15—for changing the scope of alicense.§ 5.25—for retroactive license.* * * * *(i) Processing fee for taking actionunder one of the following sectionswhich refers to this paragraph: $130.00.§ 1.28(c)(3)—for processing a nonitemizedfee deficiency based on an error insmall entity status.§ 1.41(b)—for supplying the name ornames of the inventor or joint inventors inan application without either an applicationdata sheet or the inventor’s oath ordeclaration, except in provisionalapplications.§ 1.48—for correcting inventorship, exceptin provisional applications.§ 1.52(d)—for processing a nonprovisionalapplication filed with a specification in alanguage other than English.§ 1.53(c)(3)—to convert a provisionalapplication filed under § 1.53(c) into anonprovisional application under § 1.53(b).§ 1.55—for entry of late priority papers.§ 1.71(g)(2)—for processing a belatedamendment under § 1.71(g).§ 1.103(b)—for requesting limitedsuspension of action, continuedprosecution application for a design patent(§ 1.53(d)).§ 1.103(c)—for requesting limitedsuspension of action, request for continuedexamination (§ 1.114).§ 1.103(d)—for requesting deferredexamination of an application.§ 1.217—for processing a redacted copy ofa paper submitted in the file of anapplication in which a redacted copy wassubmitted for the patent applicationpublication.§ 1.221—for requesting voluntarypublication or republication of anapplication.§ 1.291(c)(5)—for processing a second orsubsequent protest by the same real partyin interest.§ 3.81—for a patent to issue toassignee, assignment submitted afterpayment of the issue fee.* * * * *■ 10. Section 1.27 is amended byrevising paragraph (c)(2) to read asfollows:§ 1.27 Definition of small entities andestablishing status as a small entity topermit payment of small entity fees; whena determination of entitlement to smallentity status and notification of loss ofentitlement to small entity status arerequired; fraud on the Office.* * * * *(c) * * *(2) Parties who can sign the writtenassertion. The written assertion can besigned by:(i) The applicant (§ 1.42 or § 1.421);(ii) A patent practitioner of record ora practitioner acting in a representativecapacity under § 1.34;VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00039 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6(iii) The inventor or a joint inventor,if the inventor is the applicant; or(iv) The assignee.* * * * *■ 11. Section 1.31 is revised to read asfollows:§ 1.31 Applicant may be represented byone or more patent practitioners or jointinventors.An applicant for patent may file andprosecute the applicant’s own case, orthe applicant may give power ofattorney so as to be represented by oneor more patent practitioners or jointinventors, except that a juristic entity(e.g., organizational assignee) must berepresented by a patent practitionereven if the juristic entity is theapplicant. The Office cannot aid in theselection of a patent practitioner.■ 12. Section 1.32 is amended byrevising paragraphs (a)(2), (a)(3), (a)(4)and (b) and adding paragraphs (a)(6), (d)and (e) to read as follows:§ 1.32 Power of attorney.(a) * * *(2) Power of attorney means a writtendocument by which a principalauthorizes one or more patentpractitioners or joint inventors to act onthe principal’s behalf.(3) Principal means the applicant(§ 1.42) for an application for patent andthe patent owner for a patent, includinga patent in a supplemental examinationor reexamination proceeding. Theprincipal executes a power of attorneydesignating one or more patentpractitioners or joint inventors to act onthe principal’s behalf.(4) Revocation means the cancellationby the principal of the authoritypreviously given to a patent practitioneror joint inventor to act on the principal’sbehalf.* * * * *(6) Patent practitioner of recordmeans a patent practitioner who hasbeen granted a power of attorney in anapplication, patent, or other proceedingin compliance with paragraph (b) of thissection. The phrases practitioner ofrecord and attorney or agent of recordalso mean a patent practitioner who hasbeen granted a power of attorney in anapplication, patent, or other proceedingin compliance with paragraph (b) of thissection.(b) A power of attorney must:(1) Be in writing;(2) Name one or more representativesin compliance with paragraph (c) of thissection;(3) Give the representative power toact on behalf of the principal; and(4) Be signed by the applicant forpatent (§ 1.42) or the patent owner. A

48814 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESpatent owner who was not the applicantunder § 1.46 must appoint any power ofattorney in compliance with §§ 3.71 and3.73 of this chapter.* * * * *(d) A power of attorney from a priornational application for which benefit isclaimed under 35 U.S.C. 120, 121, or365(c) in a continuing application mayhave effect in the continuing applicationif a copy of the power of attorney fromthe prior application is filed in thecontinuing application unless:(1) The power of attorney was grantedby the inventor; and(2) The continuing application namesan inventor who was not named as aninventor in the prior application.(e) If the power of attorney wasgranted by the originally namedinventive entity, and an added inventorpursuant to § 1.48 does not provide apower of attorney consistent with thepower of attorney granted by theoriginally named inventive entity, theaddition of the inventor results in theloss of that power of attorney upon grantof the § 1.48 request. This provisiondoes not preclude a practitioner fromacting pursuant to § 1.34, if applicable.■ 13. Section 1.33 is amended byrevising paragraphs (a) and (b) andadding paragraphs (f) and (g) to read asfollows:§ 1.33 Correspondence respecting patentapplications, patent reexaminationproceedings, and other proceedings.(a) Correspondence address anddaytime telephone number. When filingan application, a correspondenceaddress must be set forth in either anapplication data sheet (§ 1.76), orelsewhere, in a clearly identifiablemanner, in any paper submitted with anapplication filing. If no correspondenceaddress is specified, the Office may treatthe mailing address of the first namedinventor (if provided, see §§ 1.76(b)(1)and 1.63(b)(2)) as the correspondenceaddress. The Office will direct, orotherwise make available, all notices,official letters, and othercommunications relating to theapplication to the person associatedwith the correspondence address. Forcorrespondence submitted via theOffice’s electronic filing system,however, an electronic acknowledgmentreceipt will be sent to the submitter. TheOffice will generally not engage indouble correspondence with anapplicant and a patent practitioner, orwith more than one patent practitionerexcept as deemed necessary by theDirector. If more than onecorrespondence address is specified, theOffice will select one of the specifiedaddresses for use as the correspondenceaddress and, if given, may select theaddress associated with a CustomerNumber over a typed correspondenceaddress. For the party to whomcorrespondence is to be addressed, adaytime telephone number should besupplied in a clearly identifiablemanner and may be changed by anyparty who may change thecorrespondence address. Thecorrespondence address may bechanged by the parties set forth inparagraph (b)(1) or (b)(3) of this section.Prior to the appointment of any powerof attorney under § 1.32(b), thecorrespondence address may also bechanged by any patent practitionernamed in the application transmittalpapers who acts in a representativecapacity under the provisions of § 1.34.(b) Amendments and other papers.Amendments and other papers, exceptfor written assertions pursuant to§ 1.27(c)(2)(iii) or (c)(2)(iv), filed in theapplication must be signed by:(1) A patent practitioner of record;(2) A patent practitioner not of recordwho acts in a representative capacityunder the provisions of § 1.34; or(3) The applicant (§ 1.42). Unlessotherwise specified, all paperssubmitted on behalf of a juristic entitymust be signed by a patent practitioner.* * * * *(f) Where application papers from aprior application are used in acontinuing application and thecorrespondence address was changedduring the prosecution of the priorapplication, an application data sheet orseparate paper identifying thecorrespondence address to be used forthe continuing application must besubmitted. Otherwise, the Office maynot recognize the change ofcorrespondence address effected duringthe prosecution of the prior application.(g) A patent practitioner acting in arepresentative capacity whosecorrespondence address is thecorrespondence address of record in anapplication may change thecorrespondence address after the patenthas issued, provided that the change ofcorrespondence address is accompaniedby a statement that notice has beengiven to the patentee or owner.■ 14. Section 1.36 is amended byrevising paragraph (a) to read as follows:§ 1.36 Revocation of power of attorney;withdrawal of patent attorney or agent.(a) A power of attorney, pursuant to§ 1.32(b), may be revoked at any stage inthe proceedings of a case by theapplicant or patent owner. A power ofattorney to the patent practitionersassociated with a Customer Number willbe treated as a request to revoke anyVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00040 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6powers of attorney previously given.Fewer than all of the applicants (orfewer than all patent owners in asupplemental examination orreexamination proceeding) may revokethe power of attorney only upon ashowing of sufficient cause, andpayment of the petition fee set forth in§ 1.17(f). A patent practitioner will benotified of the revocation of the powerof attorney. Where power of attorney isgiven to the patent practitionersassociated with a Customer Number(§ 1.32(c)(2)), the practitioners soappointed will also be notified of therevocation of the power of attorneywhen the power of attorney to all of thepractitioners associated with theCustomer Number is revoked. Thenotice of revocation will be mailed tothe correspondence address for theapplication (§ 1.33) in effect before therevocation. An assignment will not ofitself operate as a revocation of a powerpreviously given, but the assignee maybecome the applicant under § 1.46(c)and revoke any previous power ofattorney and grant a power of attorneyas provided in § 1.32(b).* * * * *■ 15. Section 1.41 is revised to read asfollows:§ 1.41 Inventorship.(a) An application must include, or beamended to include, the name of theinventor for any invention claimed inthe application.(b) The inventorship of anonprovisional application under 35U.S.C. 111(a) is the inventor or jointinventors set forth in the applicationdata sheet in accordance with § 1.76filed before or concurrently with theinventor’s oath or declaration. If anapplication data sheet is not filed beforeor concurrently with the inventor’s oathor declaration, the inventorship is theinventor or joint inventors set forth inthe inventor’s oath or declaration,except as provided for in §§ 1.53(d)(4)and 1.63(d). Once an application datasheet or the inventor’s oath ordeclaration is filed in a nonprovisionalapplication, any correction ofinventorship must be pursuant to § 1.48.If neither an application data sheet northe inventor’s oath or declaration isfiled during the pendency of anonprovisional application, theinventorship is the inventor or jointinventors set forth in the applicationpapers filed pursuant to § 1.53(b), unlessthe applicant files a paper, including theprocessing fee set forth in § 1.17(i),supplying the name or names of theinventor or joint inventors.

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48815sroberts on DSK5SPTVN1PROD with RULES(c) The inventorship of a provisionalapplication is the inventor or jointinventors set forth in the cover sheet asprescribed by § 1.51(c)(1). Once a coversheet as prescribed by § 1.51(c)(1) isfiled in a provisional application, anycorrection of inventorship must bepursuant to § 1.48. If a cover sheet asprescribed by § 1.51(c)(1) is not filedduring the pendency of a provisionalapplication, the inventorship is theinventor or joint inventors set forth inthe application papers filed pursuant to§ 1.53(c), unless applicant files a paperincluding the processing fee set forth in§ 1.17(q), supplying the name or namesof the inventor or joint inventors.(d) In a nonprovisional applicationunder 35 U.S.C. 111(a) filed without anapplication data sheet or the inventor’soath or declaration, or in a provisionalapplication filed without a cover sheetas prescribed by § 1.51(c)(1), the nameand residence of each person believed tobe an actual inventor should beprovided when the application paperspursuant to § 1.53(b) or § 1.53(c) arefiled.(e) The inventorship of aninternational application entering thenational stage under 35 U.S.C. 371 is theinventor or joint inventors set forth inthe application data sheet in accordancewith § 1.76 filed with the initialsubmission under 35 U.S.C. 371. Unlessthe initial submission under 35 U.S.C.371 is accompanied by an applicationdata sheet in accordance with § 1.76setting forth the inventor or jointinventors, the inventorship is theinventor or joint inventors set forth inthe international application, whichincludes any change effected under PCTRule 92 bis.■ 16. Section 1.42 is revised to read asfollows:§ 1.42 Applicant for patent.(a) The word ‘‘applicant’’ when usedin this title refers to the inventor or allof the joint inventors, or to the personapplying for a patent as provided in§§ 1.43, 1.45, or 1.46.(b) If a person is applying for a patentas provided in § 1.46, the word‘‘applicant’’ refers to the assignee, theperson to whom the inventor is underan obligation to assign the invention, orthe person who otherwise showssufficient proprietary interest in thematter, who is applying for a patentunder § 1.46 and not the inventor.(c) If fewer than all joint inventors areapplying for a patent as provided in§ 1.45, the phrase ‘‘the applicant’’ meansthe joint inventors who are applying forthe patent without the omittedinventor(s).(d) Any person having authority maydeliver an application and fees to theOffice on behalf of the applicant.However, an oath or declaration, orsubstitute statement in lieu of an oath ordeclaration, may be executed only inaccordance with § 1.63 or 1.64, acorrespondence address may beprovided only in accordance with§ 1.33(a), and amendments and otherpapers must be signed in accordancewith § 1.33(b).(e) The Office may require additionalinformation where there is a questionconcerning ownership or interest in anapplication, and a showing may berequired from the person filing theapplication that the filing wasauthorized where such authorizationcomes into question.■ 17. Section 1.43 is revised to read asfollows:§ 1.43 Application for patent by a legalrepresentative of a deceased or legallyincapacitated inventor.If an inventor is deceased or underlegal incapacity, the legal representativeof the inventor may make an applicationfor patent on behalf of the inventor. Ifan inventor dies during the timeintervening between the filing of theapplication and the granting of a patentthereon, the letters patent may be issuedto the legal representative upon properintervention. See § 1.64 concerning theexecution of a substitute statement by alegal representative in lieu of an oath ordeclaration.■ 18. Section 1.45 is revised to read asfollows:§ 1.45 Application for patent by jointinventors.(a) Joint inventors must apply for apatent jointly, and each must make aninventor’s oath or declaration asrequired by § 1.63, except as providedfor in § 1.64. If a joint inventor refusesto join in an application for patent orcannot be found or reached afterdiligent effort, the other joint inventoror inventors may make the applicationfor patent on behalf of themselves andthe omitted inventor. See § 1.64concerning the execution of a substitutestatement by the other joint inventor orinventors in lieu of an oath ordeclaration.(b) Inventors may apply for a patentjointly even though:(1) They did not physically worktogether or at the same time;(2) Each inventor did not make thesame type or amount of contribution; or(3) Each inventor did not make acontribution to the subject matter ofevery claim of the application.VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00041 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6(c) If multiple inventors are named ina nonprovisional application, eachnamed inventor must have made acontribution, individually or jointly, tothe subject matter of at least one claimof the application and the applicationwill be considered to be a jointapplication under 35 U.S.C. 116. Ifmultiple inventors are named in aprovisional application, each namedinventor must have made acontribution, individually or jointly, tothe subject matter disclosed in theprovisional application and theprovisional application will beconsidered to be a joint applicationunder 35 U.S.C. 116.■ 19. Section 1.46 is revised to read asfollows:§ 1.46 Application for patent by anassignee, obligated assignee, or a personwho otherwise shows sufficient proprietaryinterest in the matter.(a) A person to whom the inventor hasassigned or is under an obligation toassign the invention may make anapplication for patent. A person whootherwise shows sufficient proprietaryinterest in the matter may make anapplication for patent on behalf of andas agent for the inventor on proof of thepertinent facts and a showing that suchaction is appropriate to preserve therights of the parties.(b) If an application under 35 U.S.C.111 is made by a person other than theinventor under paragraph (a) of thissection, the application must contain anapplication data sheet under § 1.76specifying in the applicant informationsection (§ 1.76(b)(7)) the assignee,person to whom the inventor is underan obligation to assign the invention, orperson who otherwise shows sufficientproprietary interest in the matter. If theapplication is the national stage of aninternational application, the personwho is identified in the internationalstage as an applicant for the UnitedStates is the person specified as theoriginal applicant for the national stage.(1) If the applicant is the assignee ora person to whom the inventor is underan obligation to assign the invention,documentary evidence of ownership(e.g., assignment for an assignee,employment agreement for a person towhom the inventor is under anobligation to assign the invention)should be recorded as provided for inpart 3 of this chapter no later than thedate the issue fee is paid in theapplication.(2) If the applicant is a person whootherwise shows sufficient proprietaryinterest in the matter, such applicantmust submit a petition including:(i) The fee set forth in § 1.17(g);

48816 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULES(ii) A showing that such person hassufficient proprietary interest in thematter; and(iii) A statement that making theapplication for patent by a person whootherwise shows sufficient proprietaryinterest in the matter on behalf of andas agent for the inventor is appropriateto preserve the rights of the parties.(c) Any request to correct or updatethe name of the applicant after anapplicant has been specified underparagraph (b) of this section mustinclude an application data sheet under§ 1.76 specifying the correct or updatedname of the applicant in the applicantinformation section (§ 1.76(b)(7)). Anyrequest to change the applicant after anoriginal applicant has been specifiedunder paragraph (b) of this section mustinclude an application data sheet under§ 1.76 specifying the applicant in theapplicant information section(§ 1.76(b)(7)) and comply with §§ 3.71and 3.73 of this title.(d) Even if the whole or a part interestin the invention or in the patent to beissued is assigned or obligated to beassigned, an oath or declaration must beexecuted by the actual inventor or eachactual joint inventor, except as providedfor in § 1.64. See § 1.64 concerning theexecution of a substitute statement byan assignee, person to whom theinventor is under an obligation to assignthe invention, or a person whootherwise shows sufficient proprietaryinterest in the matter.(e) If a patent is granted on anapplication filed under this section by aperson other than the inventor, thepatent shall be granted to the real partyin interest. Otherwise, the patent may beissued to the assignee or jointly to theinventor and the assignee as provided in§ 3.81. Where a real party in interest hasfiled an application under § 1.46, theapplicant shall notify the Office of anychange in the real party in interest nolater than payment of the issue fee. TheOffice will treat the absence of such anotice as an indication that there hasbeen no change in the real party ininterest.(f) The Office may publish notice ofthe filing of the application by a personwho otherwise shows sufficientproprietary interest in the OfficialGazette.§ 1.47 [Removed and Reserved]■ 20. Section 1.47 is removed andreserved.■ 21. Section 1.48 is revised to read asfollows:§ 1.48 Correction of inventorship pursuantto 35 U.S.C. 116 or correction of the nameor order of names in a patent application,other than a reissue application.(a) Nonprovisional application: Anyrequest to correct or change theinventorship once the inventorship hasbeen established under § 1.41 mustinclude:(1) An application data sheet inaccordance with § 1.76 that identifieseach inventor by his or her legal name;and(2) The processing fee set forth in§ 1.17(i).(b) Inventor’s oath or declaration foradded inventor: An oath or declarationas required by § 1.63, or a substitutestatement in compliance with § 1.64,will be required for any actual inventorwho has not yet executed such an oathor declaration.(c) [Reserved](d) Provisional application. Once acover sheet as prescribed by § 1.51(c)(1)is filed in a provisional application, anyrequest to correct or change theinventorship must include:(1) A request, signed by a party setforth in § 1.33(b), to correct theinventorship that identifies eachinventor by his or her legal name; and(2) The processing fee set forth in§ 1.17(q).(e) Additional information may berequired. The Office may require suchother information as may be deemedappropriate under the particularcircumstances surrounding thecorrection of inventorship.(f) Correcting or updating the name ofan inventor: Any request to correct orupdate the name of the inventor or ajoint inventor, or the order of the namesof joint inventors, in a nonprovisionalapplication must include:(1) An application data sheet inaccordance with § 1.76 that identifieseach inventor by his or her legal namein the desired order; and(2) The processing fee set forth in§ 1.17(i).(g) Reissue applications not covered.The provisions of this section do notapply to reissue applications. See§§ 1.171 and 1.175 for correction ofinventorship in a patent via a reissueapplication.(h) Correction of inventorship inpatent. See § 1.324 for correction ofinventorship in a patent.(i) Correction of inventorship in aninterference or contested case before thePatent Trial and Appeal Board. In aninterference under part 41, subpart D, ofthis title, a request for correction ofinventorship in an application must bein the form of a motion under§ 41.121(a)(2) of this title. In a contestedVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00042 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6case under part 42, subpart D, of thistitle, a request for correction ofinventorship in an application must bein the form of a motion under § 42.22 ofthis title. The motion under§ 41.121(a)(2) or 42.22 of this title mustcomply with the requirements ofparagraph (a) of this section.■ 22. Section 1.51 is amended byrevising paragraph (b)(2) to read asfollows§ 1.51 General requisites of an application.* * * * *(b) * * *(2) The inventor’s oath or declaration,see §§ 1.63 and 1.64;* * * * *■ 23. Section 1.52 is amended byrevising the heading of paragraph (b)and paragraphs (c) and (d) to read asfollows:§ 1.52 Language, paper, writing, margins,compact disc specifications.* * * * *(b) The application (specification,including the claims, drawings, and theinventor’s oath or declaration) orsupplemental examination orreexamination proceeding and anyamendments or corrections to theapplication or reexaminationproceeding.* * * * *(c) Interlineation, erasure,cancellation, or other alteration of theapplication papers may be made beforeor after the signing of the inventor’s oathor declaration referring to thoseapplication papers, provided that thestatements in the inventor’s oath ordeclaration pursuant to § 1.63 remainapplicable to those application papers.A substitute specification (§ 1.125) maybe required if the application papers donot comply with paragraphs (a) and (b)of this section.(d) A nonprovisional or provisionalapplication under 35 U.S.C. 111 may bein a language other than English.(1) Nonprovisional application. If anonprovisional application under 35U.S.C. 111(a) is filed in a language otherthan English, an English languagetranslation of the non-English languageapplication, a statement that thetranslation is accurate, and theprocessing fee set forth in § 1.17(i) arerequired. If these items are not filedwith the application, the applicant willbe notified and given a period of timewithin which they must be filed inorder to avoid abandonment.(2) Provisional application. If aprovisional application under 35 U.S.C.111(b) is filed in a language other thanEnglish, an English language translation

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48817sroberts on DSK5SPTVN1PROD with RULESof the non-English language provisionalapplication will not be required in theprovisional application. See § 1.78(a) forthe requirements for claiming thebenefit of such provisional applicationin a nonprovisional application.* * * * *■ 24. Section 1.53 is amended byrevising the introductory text ofparagraphs (c) and (c)(3), andparagraphs (d)(2)(iv), (f), and (h) to readas follows:§ 1.53 Application number, filing date, andcompletion of application.* * * * *(c) Application filing requirements—Provisional application. The filing dateof a provisional application is the dateon which a specification as prescribedby 35 U.S.C. 112(a), and any drawingrequired by § 1.81(a) are filed in thePatent and Trademark Office. Noamendment, other than to make theprovisional application comply with thepatent statute and all applicableregulations, may be made to theprovisional application after the filingdate of the provisional application.* * * * *(3) A provisional application filedunder paragraph (c) of this section maybe converted to a nonprovisionalapplication filed under paragraph (b) ofthis section and accorded the originalfiling date of the provisionalapplication. The conversion of aprovisional application to anonprovisional application will notresult in either the refund of any feeproperly paid in the provisionalapplication or the application of anysuch fee to the filing fee, or any otherfee, for the nonprovisional application.Conversion of a provisional applicationto a nonprovisional application underthis paragraph will result in the term ofany patent to issue from the applicationbeing measured from at least the filingdate of the provisional application forwhich conversion is requested. Thus,applicants should consider avoidingthis adverse patent term impact by filinga nonprovisional application claimingthe benefit of the provisionalapplication under 35 U.S.C. 119(e)(rather than converting the provisionalapplication into a nonprovisionalapplication pursuant to this paragraph).A request to convert a provisionalapplication to a nonprovisionalapplication must be accompanied by thefee set forth in § 1.17(i) and anamendment including at least one claimas prescribed by 35 U.S.C. 112(b), unlessthe provisional application underparagraph (c) of this section otherwisecontains at least one claim as prescribedby 35 U.S.C. 112(b). The nonprovisionalapplication resulting from conversion ofa provisional application must alsoinclude the filing fee, search fee, andexamination fee for a nonprovisionalapplication, the inventor’s oath ordeclaration, and the surcharge requiredby § 1.16(f) if either the basic filing feefor a nonprovisional application or theinventor’s oath or declaration was notpresent on the filing date accorded theresulting nonprovisional application(i.e., the filing date of the originalprovisional application). A request toconvert a provisional application to anonprovisional application must also befiled prior to the earliest of:* * * * *(d) * * *(2) * * *(iv) Includes the request for anapplication under this paragraph, willutilize the file jacket and contents of theprior application, including thespecification, drawings and theinventor’s oath or declaration from theprior application, to constitute the newapplication, and will be assigned theapplication number of the priorapplication for identification purposes;and* * * * *(f) Completion of applicationsubsequent to filing—Nonprovisional(including continued prosecution orreissue) application.(1) If an application which has beenaccorded a filing date pursuant toparagraph (b) or (d) of this section doesnot include the basic filing fee, thesearch fee, or the examination fee, or ifan application which has been accordeda filing date pursuant to paragraph (b)of this section does not include theinventor’s oath or declaration (§ 1.63,§ 1.64, § 1.162 or § 1.175), and theapplicant has provided acorrespondence address (§ 1.33(a)), theapplicant will be notified and given aperiod of time within which to pay thebasic filing fee, search fee, andexamination fee, and pay the surchargeif required by § 1.16(f) to avoidabandonment.(2) If an application which has beenaccorded a filing date pursuant toparagraph (b) of this section does notinclude the basic filing fee, the searchfee, the examination fee, or theinventor’s oath or declaration, and theapplicant has not provided acorrespondence address (§ 1.33(a)), theapplicant has two months from thefiling date of the application withinwhich to pay the basic filing fee, searchfee, and examination fee, and pay thesurcharge required by § 1.16(f) to avoidabandonment.VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00043 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6(3) The inventor’s oath or declarationin an application under § 1.53(b) mustalso be filed within the period specifiedin paragraph (f)(1) or (f)(2) of thissection, except that the filing of theinventor’s oath or declaration may bepostponed until the application isotherwise in condition for allowanceunder the conditions specified inparagraphs (f)(3)(i) and (f)(3)(ii) of thissection.(i) The application must be an original(non-reissue) application that containsan application data sheet in accordancewith § 1.76 identifying:(A) Each inventor by his or her legalname;(B) A mailing address where theinventor customarily receives mail, andresidence, if an inventor lives at alocation which is different from wherethe inventor customarily receives mail,for each inventor.(ii) The applicant must file an oath ordeclaration in compliance with § 1.63,or a substitute statement in compliancewith § 1.64, executed by or with respectto each actual inventor no later than theexpiration of the time period set in the‘‘Notice of Allowability’’ to avoidabandonment, when the applicant isnotified in a ‘‘Notice of Allowability’’that an application is otherwise incondition for allowance. The timeperiod set in a ‘‘Notice of Allowability’’is not extendable. See § 1.136(c). TheOffice may dispense with the noticeprovided for in paragraph (f)(1) of thissection if an oath or declaration under§ 1.63, or a substitute statement under§ 1.64, executed by or with respect toeach actual inventor has been filedbefore the application is in condition forallowance.(4) If the excess claims fees requiredby § 1.16(h) and (i) and multipledependent claim fee required by§ 1.16(j) are not paid on filing or on laterpresentation of the claims for which theexcess claims or multiple dependentclaim fees are due, the fees required by§ 1.16(h), (i) and (j) must be paid or theclaims canceled by amendment prior tothe expiration of the time period set forreply by the Office in any notice of feedeficiency. If the application size feerequired by § 1.16(s) (if any) is not paidon filing or on later presentation of theamendment necessitating a fee oradditional fee under § 1.16(s), the feerequired by § 1.16(s) must be paid priorto the expiration of the time period setfor reply by the Office in any notice offee deficiency in order to avoidabandonment.(5) This paragraph applies tocontinuation or divisional applicationsunder paragraphs (b) or (d) of thissection and to continuation-in-part

sroberts on DSK5SPTVN1PROD with RULES48818 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationsapplications under paragraph (b) of thissection. See § 1.63(d) concerning thesubmission of a copy of the inventor’soath or declaration from the priorapplication for a continuing applicationunder paragraph (b) of this section.(6) If applicant does not pay the basicfiling fee during the pendency of theapplication, the Office may dispose ofthe application.* * * * *(h) Subsequent treatment ofapplication—Nonprovisional (includingcontinued prosecution) application. Anapplication for a patent filed underparagraphs (b) or (d) of this section willnot be placed on the files forexamination until all its required parts,complying with the rules relatingthereto, are received, except that theinventor’s oath or declaration may befiled when the application is otherwisein condition for allowance pursuant toparagraph (f)(3) of this section andminor informalities may be waivedsubject to subsequent correctionwhenever required.* * * * *■ 25. Section 1.55 is amended byrevising the introductory text ofparagraph (a)(1)(i), the introductory textof paragraph (c), and paragraph (d)(1)(ii)to read as follows:§ 1.55 Claim for foreign priority.(a) * * *(1)(i) In an original application filedunder 35 U.S.C. 111(a), the claim forforeign priority must be presented in anapplication data sheet (§ 1.76(b)(6))during the pendency of the application,and within the later of four months fromthe actual filing date of the applicationor sixteen months from the filing date ofthe prior foreign application. This timeperiod is not extendable. The claimmust identify the foreign application forwhich priority is claimed, as well as anyforeign application for the same subjectmatter and having a filing date beforethat of the application for which priorityis claimed, by specifying the applicationnumber, country (or intellectualproperty authority), day, month, andyear of its filing. The time periods inthis paragraph do not apply in anapplication under 35 U.S.C. 111(a) if theapplication is:* * * * *(c) Unless such claim is accepted inaccordance with the provisions of thisparagraph, any claim for priority under35 U.S.C. 119(a)–(d) or 365(a) notpresented in an application data sheet(§ 1.76(b)(6)) within the time periodprovided by paragraph (a) of this sectionis considered to have been waived. If aclaim for priority under 35 U.S.C.119(a)–(d) or 365(a) is presented afterthe time period provided by paragraph(a) of this section, the claim may beaccepted if the claim identifying theprior foreign application by specifyingits application number, country (orintellectual property authority), and theday, month, and year of its filing wasunintentionally delayed. A petition toaccept a delayed claim for priorityunder 35 U.S.C. 119(a)–(d) or 365(a)must be accompanied by:* * * * *(d)(1) * * *(ii) The foreign application isidentified in an application data sheet(§ 1.76(b)(6)); and* * * * *■ 26. Section 1.56 is amended byrevising paragraph (c)(3) to read asfollows:§ 1.56 Duty to disclose informationmaterial to patentability.* * * * *(c) * * *(3) Every other person who issubstantively involved in thepreparation or prosecution of theapplication and who is associated withthe inventor, the applicant, an assignee,or anyone to whom there is anobligation to assign the application.* * * * *■ 27. Section 1.59 is amended byrevising paragraph (a)(2) to read asfollows:§ 1.59 Expungement of information orcopy of papers in application file.(a) * * *(2) Information forming part of theoriginal disclosure (i.e., writtenspecification including the claims,drawings, and any preliminaryamendment present on the filing date ofthe application) will not be expungedfrom the application file.* * * * *■ 28. Section 1.63 is revised to read asfollows:§ 1.63 Inventor’s oath or declaration.(a) The inventor, or each individualwho is a joint inventor of a claimedinvention, in an application for patentmust execute an oath or declarationdirected to the application, except asprovided for in § 1.64. An oath ordeclaration under this section must:(1) Identify the inventor or jointinventor executing the oath ordeclaration by his or her legal name;(2) Identify the application to whichit is directed;(3) Include a statement that the personexecuting the oath or declarationbelieves the named inventor or jointVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00044 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6inventor to be the original inventor oran original joint inventor of a claimedinvention in the application for whichthe oath or declaration is beingsubmitted; and(4) State that the application wasmade or was authorized to be made bythe person executing the oath ordeclaration.(b) Unless the following informationis supplied in an application data sheetin accordance with § 1.76, the oath ordeclaration must also identify:(1) Each inventor by his or her legalname; and(2) A mailing address where theinventor customarily receives mail, andresidence, if an inventor lives at alocation which is different from wherethe inventor customarily receives mail,for each inventor.(c) A person may not execute an oathor declaration for an application unlessthat person has reviewed andunderstands the contents of theapplication, including the claims, and isaware of the duty to disclose to theOffice all information known to theperson to be material to patentability asdefined in § 1.56. There is no minimumage for a person to be qualified toexecute an oath or declaration, but theperson must be competent to execute,i.e., understand, the document that theperson is executing.(d)(1) A newly executed oath ordeclaration under § 1.63, or substitutestatement under § 1.64, is not requiredunder § 1.51(b)(2) and § 1.53(f) or§ 1.497 for an inventor in a continuingapplication that claims the benefitunder 35 U.S.C. 120, 121, or 365(c) incompliance with § 1.78 of an earlierfiledapplication, provided that an oathor declaration in compliance with thissection, or substitute statement under§ 1.64, was executed by or with respectto such inventor and was filed in theearlier-filed application, and a copy ofsuch oath, declaration, or substitutestatement showing the signature or anindication thereon that it was executed,is submitted in the continuingapplication.(2) The inventorship of a continuingapplication filed under 35 U.S.C. 111(a)is the inventor or joint inventorsspecified in the application data sheetfiled before or concurrently with thecopy of the inventor’s oath ordeclaration from the earlier-filedapplication. If an application data sheetis not filed before or concurrently withthe copy of the inventor’s oath ordeclaration from the earlier-filedapplication, the inventorship is theinventorship set forth in the copy of theinventor’s oath or declaration from theearlier-filed application, unless it is

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48819sroberts on DSK5SPTVN1PROD with RULESaccompanied by a statement signedpursuant to § 1.33(b) stating the name ofeach inventor in the continuingapplication.(3) Any new joint inventor named inthe continuing application must providean oath or declaration in compliancewith this section, except as provided forin § 1.64.(e)(1) An assignment may also serveas an oath or declaration required bythis section if the assignment asexecuted:(i) Includes the information andstatements required under paragraphs(a) and (b) of this section; and(ii) A copy of the assignment isrecorded as provided for in part 3 of thischapter.(2) Any reference to an oath ordeclaration under this section includesan assignment as provided for in thisparagraph.(f) With respect to an applicationnaming only one inventor, any referenceto the inventor’s oath or declaration inthis chapter includes a substitutestatement executed under § 1.64. Withrespect to an application naming morethan one inventor, any reference to theinventor’s oath or declaration in thischapter means the oaths, declarations,or substitute statements that have beencollectively executed by or with respectto all of the joint inventors, unlessotherwise clear from the context.(g) An oath or declaration under thissection, including the statementprovided for in paragraph (e) of thissection, must be executed (i.e., signed)in accordance either with § 1.66 or withan acknowledgment that any willfulfalse statement made in suchdeclaration or statement is punishableunder 18 U.S.C. 1001 by fine orimprisonment of not more than five (5)years, or both.(h) An oath or declaration filed at anytime pursuant to 35 U.S.C. 115(h)(1)will be placed in the file record of theapplication or patent, but may notnecessarily be reviewed by the Office.Any request for correction of the namedinventorship must comply with § 1.48in an application and § 1.324 in apatent.■ 29. Section 1.64 is revised to read asfollows:§ 1.64 Substitute statement in lieu of anoath or declaration.(a) An applicant under § 1.43, 1.45 or1.46 may execute a substitute statementin lieu of an oath or declaration under§ 1.63 if the inventor is deceased, isunder a legal incapacity, has refused toexecute the oath or declaration under§ 1.63, or cannot be found or reachedafter diligent effort.(b) A substitute statement under thissection must:(1) Comply with the requirements of§ 1.63(a), identifying the inventor orjoint inventor with respect to whom asubstitute statement in lieu of an oath ordeclaration is executed, and statingupon information and belief the factswhich such inventor is required to state;(2) Identify the person executing thesubstitute statement and therelationship of such person to theinventor or joint inventor with respectto whom the substitute statement isexecuted, and unless such informationis supplied in an application data sheetin accordance with § 1.76, the residenceand mailing address of the personsigning the substitute statement;(3) Identify the circumstancespermitting the person to execute thesubstitute statement in lieu of an oath ordeclaration under § 1.63, namelywhether the inventor is deceased, isunder a legal incapacity, cannot befound or reached after a diligent effortwas made, or has refused to execute theoath or declaration under § 1.63; and(4) Unless the following informationis supplied in an application data sheetin accordance with § 1.76, also identify:(i) Each inventor by his or her legalname; and(ii) The last known mailing addresswhere the inventor customarily receivesmail, and last known residence, if aninventor lives at a location which isdifferent from where the inventorcustomarily receives mail, for eachinventor who is not deceased or undera legal incapacity.(c) A person may not execute asubstitute statement provided for in thissection for an application unless thatperson has reviewed and understandsthe contents of the application,including the claims, and is aware of theduty to disclose to the Office allinformation known to the person to bematerial to patentability as defined in§ 1.56.(d) Any reference to an inventor’soath or declaration includes a substitutestatement provided for in this section.(e) A substitute statement under thissection must contain anacknowledgment that any willful falsestatement made in such statement ispunishable under section 1001 of title18 by fine or imprisonment of not morethan 5 years, or both.(f) A nonsigning inventor or legalrepresentative may subsequently join inthe application by submitting an oath ordeclaration under § 1.63. Thesubmission of an oath or declaration bya nonsigning inventor or legalrepresentative in an application filedunder § 1.43, 1.45 or 1.46 will notVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00045 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6permit the nonsigning inventor or legalrepresentative to revoke or grant apower of attorney.■ 30. Section 1.66 is revised to read asfollows:§ 1.66 Statements under oath.An oath or affirmation may be madebefore any person within the UnitedStates authorized by law to administeroaths. An oath made in a foreigncountry may be made before anydiplomatic or consular officer of theUnited States authorized to administeroaths, or before any officer having anofficial seal and authorized toadminister oaths in the foreign countryin which the applicant may be, whoseauthority shall be proved by a certificateof a diplomatic or consular officer of theUnited States, or by an apostille of anofficial designated by a foreign countrywhich, by treaty or convention, accordslike effect to apostilles of designatedofficials in the United States. The oathshall be attested in all cases in this andother countries, by the proper officialseal of the officer before whom the oathor affirmation is made. Such oath oraffirmation shall be valid as toexecution if it complies with the laws ofthe State or country where made. Whenthe person before whom the oath oraffirmation is made in this country isnot provided with a seal, his officialcharacter shall be established bycompetent evidence, as by a certificatefrom a clerk of a court of record or otherproper officer having a seal.■ 31. Section 1.67 is revised to read asfollows:§ 1.67 Supplemental oath or declaration.(a) The applicant may submit aninventor’s oath or declaration meetingthe requirements of § 1.63, § 1.64, or§ 1.162 to correct any deficiencies orinaccuracies present in an earlier-filedinventor’s oath or declaration.Deficiencies or inaccuracies due to thefailure to meet the requirements of§ 1.63(b) in an oath or declaration maybe corrected with an application datasheet in accordance with § 1.76, exceptthat any correction of inventorship mustbe pursuant to § 1.48.(b) A supplemental inventor’s oath ordeclaration under this section must beexecuted by the person whoseinventor’s oath or declaration is beingwithdrawn, replaced, or otherwisecorrected.(c) The Office will not require aperson who has executed an oath ordeclaration in compliance with 35U.S.C. 115 and § 1.63 or 1.162 for anapplication to provide an additionalinventor’s oath or declaration for theapplication.

sroberts on DSK5SPTVN1PROD with RULES48820 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations(d) No new matter may be introducedinto a nonprovisional application afterits filing date even if an inventor’s oathor declaration is filed to correctdeficiencies or inaccuracies present inthe earlier-filed inventor’s oath ordeclaration.■ 32. Section 1.76 is amended byrevising paragraphs (a), (b)(1), (b)(3),(b)(5), (b)(7), (c), and (d), and addingnew paragraph (e) to read as follows:§ 1.76 Application data sheet.(a) Application data sheet: Anapplication data sheet is a sheet orsheets, that may be submitted in aprovisional application under 35 U.S.C.111(b), a nonprovisional applicationunder 35 U.S.C. 111(a), or a nationalstage application under 35 U.S.C. 371,and must be submitted when requiredby § 1.55 or 1.78 to claim priority to orthe benefit of a prior-filed applicationunder 35 U.S.C. 119, 120, 121, or 365.An application data sheet must be titled‘‘Application Data Sheet.’’ Anapplication data sheet must contain allof the section headings listed inparagraph (b) of this section, except asprovided in paragraph (c)(2) of thissection, with any appropriate data foreach section heading. If an applicationdata sheet is provided, the applicationdata sheet is part of the application forwhich it has been submitted.(b) * * *(1) Inventor information. Thisinformation includes the legal name,residence, and mailing address of theinventor or each joint inventor.* * * * *(3) Application information. Thisinformation includes the title of theinvention, the total number of drawingsheets, a suggested drawing figure forpublication (in a nonprovisionalapplication), any docket numberassigned to the application, the type ofapplication (e.g., utility, plant, design,reissue, provisional), whether theapplication discloses any significantpart of the subject matter of anapplication under a secrecy orderpursuant to § 5.2 of this chapter (see§ 5.2(c)), and, for plant applications, theLatin name of the genus and species ofthe plant claimed, as well as the varietydenomination.* * * * *(5) Domestic benefit information. Thisinformation includes the applicationnumber, the filing date, the status(including patent number if available),and relationship of each application forwhich a benefit is claimed under 35U.S.C. 119(e), 120, 121, or 365(c).Providing this information in theapplication data sheet constitutes thespecific reference required by 35 U.S.C.119(e) or 120, and § 1.78(a)(2) or§ 1.78(a)(5).* * * * *(7) Applicant information: Thisinformation includes the name (eithernatural person or juristic entity) andaddress of the legal representative,assignee, person to whom the inventoris under an obligation to assign theinvention, or person who otherwiseshows sufficient proprietary interest inthe matter who is the applicant under§ 1.43 or § 1.46. Providing assignmentinformation in the application datasheet does not substitute for compliancewith any requirement of part 3 of thischapter to have an assignment recordedby the Office.(c) Correcting and updating anapplication data sheet. (1) Informationin a previously submitted applicationdata sheet, inventor’s oath ordeclaration under § 1.63, § 1.64 or§ 1.67, or otherwise of record, may becorrected or updated until payment ofthe issue fee by a new application datasheet providing corrected or updatedinformation, except that inventorshipchanges must comply with therequirements of § 1.48, foreign priorityand domestic benefit informationchanges must comply with §§ 1.55 and1.78, and correspondence addresschanges are governed by § 1.33(a).(2) An application data sheetproviding corrected or updatedinformation may include all of thesections listed in paragraph (b) of thissection or only those sectionscontaining changed or updatedinformation. The application data sheetmust include the section headings listedin paragraph (b) of this section for eachsection included in the application datasheet, and must identify the informationthat is being changed, with underliningfor insertions, and strike-through orbrackets for text removed, except thatidentification of information beingchanged is not required for anapplication data sheet included with aninitial submission under 35 U.S.C. 371.(d) Inconsistencies betweenapplication data sheet and otherdocuments. For inconsistencies betweeninformation that is supplied by both anapplication data sheet under this sectionand other documents:(1) The most recent submission willgovern with respect to inconsistenciesas between the information provided inan application data sheet, a designationof a correspondence address, or by theinventor’s oath or declaration, exceptthat:(i) The most recent application datasheet will govern with respect to foreignVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00046 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6priority (§ 1.55) or domestic benefit(§ 1.78) claims; and(ii) The naming of the inventorship isgoverned by § 1.41 and changes toinventorship or the names of theinventors is governed by § 1.48.(2) The information in the applicationdata sheet will govern when theinconsistent information is supplied atthe same time by a designation ofcorrespondence address or theinventor’s oath or declaration.(3) The Office will capturebibliographic information from theapplication data sheet. The Office willgenerally not review the inventor’s oathor declaration to determine if thebibliographic information containedtherein is consistent with thebibliographic information provided inan application data sheet. Incorrectbibliographic information contained inan application data sheet may becorrected as provided in paragraph(c)(1) of this section.(e) Signature requirement. Anapplication data sheet must be signed incompliance with § 1.33(b). An unsignedapplication data sheet will be treatedonly as a transmittal letter.■ 33. Section 1.77 is amended byrevising paragraph (a)(6) to read asfollows:§ 1.77 Arrangement of applicationelements.(a) * * *(6) The inventor’s oath or declaration.* * * * *■ 34. Section 1.78 is amended byrevising paragraphs (a)(2)(iii), (a)(5)(iii),(a)(5)(iv), and (c) to read as follows:§ 1.78 Claiming benefit of earlier filing dateand cross-references to other applications.(a) * * *(2) * * *(iii) If the later-filed application is anonprovisional application, thereference required by this paragraphmust be included in an application datasheet (§ 1.76(b)(5)).* * * * *(5) * * *(iii) If the later filed application is anonprovisional application, thereference required by this paragraphmust be included in an application datasheet (§ 1.76(b)(5)).(iv) If the prior-filed provisionalapplication was filed in a language otherthan English and both an Englishlanguagetranslation of the prior-filedprovisional application and a statementthat the translation is accurate were notpreviously filed in the prior-filedprovisional application, applicant willbe notified and given a period of time

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48821sroberts on DSK5SPTVN1PROD with RULESwithin which to file, in the prior-filedprovisional application, the translationand the statement. If the notice ismailed in a pending nonprovisionalapplication, a timely reply to such anotice must include the filing in thenonprovisional application of either aconfirmation that the translation andstatement were filed in the provisionalapplication, or an application data sheeteliminating the reference under thisparagraph to the prior-filed provisionalapplication, or the nonprovisionalapplication will be abandoned. Thetranslation and statement may be filedin the provisional application, even ifthe provisional application has becomeabandoned.* * * * *(c) If an application or a patent underreexamination and at least one otherapplication naming different inventorsare owned by the same person andcontain conflicting claims, and there isno statement of record indicating thatthe claimed inventions were commonlyowned or subject to an obligation ofassignment to the same person at thetime the later invention was made, theOffice may require the applicant to statewhether the claimed inventions werecommonly owned or subject to anobligation of assignment to the sameperson at the time the later inventionwas made, and if not, indicate whichnamed inventor is the prior inventor.Even if the claimed inventions werecommonly owned, or subject to anobligation of assignment to the sameperson, at the time the later inventionwas made, the conflicting claims may berejected under the doctrine of doublepatenting in view of such commonlyowned or assigned applications orpatents under reexamination.■ 35. Section 1.81 is amended byrevising paragraph (a) to read as follows:§ 1.81 Drawings required in patentapplication.(a) The applicant for a patent isrequired to furnish a drawing of theinvention where necessary for theunderstanding of the subject mattersought to be patented; this drawing, ora high quality copy thereof, must befiled with the application. Sincecorrections are the responsibility of theapplicant, the original drawing(s)should be retained by the applicant forany necessary future correction.* * * * *■ 36. Section 1.105 is amended byremoving paragraph (a)(2), andredesignating paragraphs (a)(3) and(a)(4) as paragraphs (a)(2) and (a)(3),respectively.■ 37. Section 1.131 is amended byrevising the introductory text ofparagraph (a) to read as follows:§ 1.131 Affidavit or declaration of priorinvention.(a) When any claim of an applicationor a patent under reexamination isrejected, the applicant or patent ownermay submit an appropriate oath ordeclaration to establish invention of thesubject matter of the rejected claim priorto the effective date of the reference oractivity on which the rejection is based.The effective date of a U.S. patent, U.S.patent application publication, orinternational application publicationunder PCT Article 21(2) is the earlier ofits publication date or date that it iseffective as a reference under 35 U.S.C.102(e). Prior invention may not beestablished under this section in anycountry other than the United States, aNAFTA country, or a WTO membercountry. Prior invention may not beestablished under this section beforeDecember 8, 1993, in a NAFTA countryother than the United States, or beforeJanuary 1, 1996, in a WTO membercountry other than a NAFTA country.Prior invention may not be establishedunder this section if either:* * * * *■ 38. Section 1.136 is amended byrevising paragraph (c)(1) to read asfollows:§ 1.136 Extensions of time.* * * * *(c) * * *(1) The period for submitting theinventor’s oath or declaration;* * * * *■ 39. Section 1.153 is amended byrevising paragraph (b) to read as follows:§ 1.153 Title, description and claim, oathor declaration.* * * * *(b) The inventor’s oath or declarationmust comply with the requirements of§ 1.63, or comply with the requirementsof § 1.64 for a substitute statement.■ 40. Section 1.154 is amended byrevising paragraph (a)(6) to read asfollows:§ 1.154 Arrangement of applicationelements in a design application.(a) * * *(6) The inventor’s oath or declaration(see § 1.153(b)).* * * * *■ 41. Section 1.162 is revised to read asfollows:§ 1.162 Applicant, oath or declaration.The inventor named for a plant patentapplication must be the person who hasVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00047 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6invented or discovered and asexuallyreproduced the new and distinct varietyof plant for which a patent is sought.The inventor’s oath or declaration, inaddition to the averments required by§ 1.63 or § 1.64, must state that theinventor has asexually reproduced theplant. Where the plant is a newly foundplant, the inventor’s oath or declarationmust also state that it was found in acultivated area.■ 42. Section 1.163 is amended byrevising paragraph (b)(6) to read asfollows:§ 1.163 Specification and arrangement ofapplication elements in a plant application.* * * * *(b) * * *(6) The inventor’s oath or declaration(§ 1.162).* * * * *■ 43. Section 1.172 is revised to read asfollows:§ 1.172 Reissue applicant.(a) The reissue applicant is theoriginal patentee, or the current patentowner if there has been an assignment.A reissue application must beaccompanied by the written consent ofall assignees, if any, currently owningan undivided interest in the patent. Allassignees consenting to the reissue mustestablish their ownership in the patentby filing in the reissue application asubmission in accordance with theprovisions of § 3.73(c) of this chapter.(b) A reissue will be granted to theoriginal patentee, his legalrepresentatives or assigns as the interestmay appear.■ 44. Section 1.175 is revised to read asfollows:§ 1.175 Inventor’s oath or declaration for areissue application.(a) The inventor’s oath or declarationfor a reissue application, in addition tocomplying with the requirements of§ 1.63, § 1.64, or § 1.67, must alsospecifically identify at least one errorpursuant to 35 U.S.C. 251 being reliedupon as the basis for reissue and statethat the applicant believes the originalpatent to be wholly or partly inoperativeor invalid by reason of a defectivespecification or drawing, or by reason ofthe patentee claiming more or less thanthe patentee had the right to claim inthe patent.(b) If the reissue application seeks toenlarge the scope of the claims of thepatent (a basis for the reissue is thepatentee claiming less than the patenteehad the right to claim in the patent), theinventor’s oath or declaration for areissue application must identify aclaim that the application seeks to

48822 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESbroaden. A claim is a broadened claimif the claim is broadened in any respect.(c) The inventor, or each individualwho is a joint inventor of a claimedinvention, in a reissue application mustexecute an oath or declaration for thereissue application, except as providedfor in § 1.64, and except that theinventor’s oath or declaration for areissue application may be signed by theassignee of the entire interest if:(1) The application does not seek toenlarge the scope of the claims of theoriginal patent; or(2) The application for the originalpatent was filed under § 1.46 by theassignee of the entire interest.(d) If errors previously identified inthe inventor’s oath or declaration for areissue application pursuant toparagraph (a) of this section are nolonger being relied upon as the basis forreissue, the applicant must identify anerror being relied upon as the basis forreissue.(e) The inventor’s oath or declarationfor a reissue application required byparagraph (a) of this section may besubmitted under the provisions of§ 1.53(f), except that the provisions of§ 1.53(f)(3) do not apply to a reissueapplication.(f)(1) The requirement for theinventor’s oath or declaration for acontinuing reissue application thatclaims the benefit under 35 U.S.C. 120,121, or 365(c) in compliance with § 1.78of an earlier-filed reissue applicationmay be satisfied by a copy of theinventor’s oath or declaration from theearlier-filed reissue application,provided that:(i) The inventor, or each individualwho is a joint inventor of a claimedinvention, in the reissue applicationexecuted an inventor’s oath ordeclaration for the earlier-filed reissueapplication, except as provided for in§ 1.64;(ii) The continuing reissue applicationdoes not seek to enlarge the scope of theclaims of the original patent; or(iii) The application for the originalpatent was filed under § 1.46 by theassignee of the entire interest.(2) If all errors identified in theinventor’s oath or declaration from theearlier-filed reissue application are nolonger being relied upon as the basis forreissue, the applicant must identify anerror being relied upon as the basis forreissue.(g) An oath or declaration filed at anytime pursuant to 35 U.S.C. 115(h)(1),will be placed in the file record of thereissue application, but may notnecessarily be reviewed by the Office.■ 45. Section 1.211 is amended byrevising paragraph (c) to read as follows:§ 1.211 Publication of applications.* * * * *(c) An application filed under 35U.S.C. 111(a) will not be published untilit includes the basic filing fee (§ 1.16(a)or § 1.16(c)) and any English translationrequired by § 1.52(d). The Office maydelay publishing any application until itincludes any application size feerequired by the Office under § 1.16(s) or§ 1.492(j), a specification having papersin compliance with § 1.52 and anabstract (§ 1.72(b)), drawings incompliance with § 1.84, a sequencelisting in compliance with §§ 1.821through 1.825 (if applicable), and theinventor’s oath or declaration orapplication data sheet containing theinformation specified in § 1.63(b).* * * * *■ 46. Section 1.215 is amended byrevising paragraphs (a) through (c) toread as follows:§ 1.215 Patent application publication.(a) The publication of an applicationunder 35 U.S.C. 122(b) shall include apatent application publication. The dateof publication shall be indicated on thepatent application publication. Thepatent application publication will bebased upon the specification anddrawings deposited on the filing date ofthe application, as well as theapplication data sheet and/or theinventor’s oath or declaration. Thepatent application publication may alsobe based upon amendments to thespecification (other than the abstract orthe claims) that are reflected in asubstitute specification under § 1.125(b),amendments to the abstract under§ 1.121(b), amendments to the claimsthat are reflected in a complete claimlisting under § 1.121(c), andamendments to the drawings under§ 1.121(d), provided that such substitutespecification or amendment issubmitted in sufficient time to beentered into the Office file wrapper ofthe application before technicalpreparations for publication of theapplication have begun. Technicalpreparations for publication of anapplication generally begin four monthsprior to the projected date ofpublication. The patent applicationpublication of an application that hasentered the national stage under 35U.S.C. 371 may also includeamendments made during theinternational stage. See paragraph (c) ofthis section for publication of anapplication based upon a copy of theapplication submitted via the Officeelectronic filing system.(b) The patent application publicationwill include the name of the assignee,VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00048 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6person to whom the inventor is underan obligation to assign the invention, orperson who otherwise shows sufficientproprietary interest in the matter if thatinformation is provided in theapplication data sheet in an applicationfiled under § 1.46. Assignee informationmay be included on the patentapplication publication in otherapplications if the assignee informationis provided in an application data sheetsubmitted in sufficient time to beentered into the Office file wrapper ofthe application before technicalpreparations for publication of theapplication have begun. Providingassignee information in the applicationdata sheet does not substitute forcompliance with any requirement ofpart 3 of this chapter to have anassignment recorded by the Office.(c) At applicant’s option, the patentapplication publication will be basedupon the copy of the application(specification, drawings, and theapplication data sheet and/or theinventor’s oath or declaration) asamended, provided that applicantsupplies such a copy in compliancewith the Office electronic filing systemrequirements within one month of themailing date of the first Officecommunication that includes aconfirmation number for theapplication, or fourteen months of theearliest filing date for which a benefit issought under title 35, United StatesCode, whichever is later.* * * * *■ 47. Section 1.321 is amended byrevising paragraph (b) to read as follows:§ 1.321 Statutory disclaimers, includingterminal disclaimers.* * * * *(b) An applicant may disclaim ordedicate to the public the entire term, orany terminal part of the term, of a patentto be granted. Such terminal disclaimeris binding upon the grantee and itssuccessors or assigns. The terminaldisclaimer, to be recorded in the Patentand Trademark Office, must:(1) Be signed by the applicant or anattorney or agent of record;(2) Specify the portion of the term ofthe patent being disclaimed;(3) State the present extent ofapplicant’s ownership interest in thepatent to be granted; and(4) Be accompanied by the fee setforth in § 1.20(d).* * * * *■ 48. Section 1.324 is revised to read asfollows:

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48823sroberts on DSK5SPTVN1PROD with RULES§ 1.324 Correction of inventorship inpatent, pursuant to 35 U.S.C. 256.(a) Whenever through error a personis named in an issued patent as theinventor, or an inventor is not named inan issued patent, the Director, pursuantto 35 U.S.C. 256, may, on application ofall the parties and assignees, or on orderof a court before which such matter iscalled in question, issue a certificatenaming only the actual inventor orinventors.(b) Any request to correctinventorship of a patent pursuant toparagraph (a) of this section must beaccompanied by:(1) A statement from each person whois being added as an inventor and eachperson who is currently named as aninventor either agreeing to the change ofinventorship or stating that he or shehas no disagreement in regard to therequested change;(2) A statement from all assignees ofthe parties submitting a statement underparagraph (b)(1) of this section agreeingto the change of inventorship in thepatent, which statement must complywith the requirements of § 3.73(c) of thischapter; and(3) The fee set forth in § 1.20(b).(c) For correction of inventorship inan application, see § 1.48.(d) In an interference under part 41,subpart D, of this title, a request forcorrection of inventorship in a patentmust be in the form of a motion under§ 41.121(a)(2) of this title. In a contestedcase under part 42, subpart D, of thistitle, a request for correction ofinventorship in a patent must be in theform of a motion under § 42.22 of thistitle. The motion under § 41.121(a)(2) or§ 42.22 of this title must comply withthe requirements of this section.■ 49. Section 1.414 is amended byrevising paragraph (c)(2) to read asfollows:§ 1.414 The United States Patent andTrademark Office as a Designated Office orElected Office.* * * * *(c) * * *(2) National stage processing forinternational applications entering thenational stage under 35 U.S.C. 371.■ 50. Section 1.421 is revised to read asfollows:§ 1.421 Applicant for internationalapplication.(a) Only residents or nationals of theUnited States of America may fileinternational applications in the UnitedStates Receiving Office. If aninternational application does notinclude an applicant who is indicated asbeing a resident or national of theUnited States of America, and at leastone applicant:(1) Has indicated a residence ornationality in a PCT Contracting State,or(2) Has no residence or nationalityindicated, applicant will be so notifiedand, if the international applicationincludes a fee amount equivalent to thatrequired by § 1.445(a)(4), theinternational application will beforwarded for processing to theInternational Bureau acting as aReceiving Office (see also § 1.412(c)(6)).(b) Although the United StatesReceiving Office will acceptinternational applications filed by anyapplicant who is a resident or nationalof the United States of America forinternational processing, for thepurposes of the designation of theUnited States, an internationalapplication will be accepted by thePatent and Trademark Office for thenational stage only if the applicant isthe inventor or other person as providedin § 1.422 or § 1.424. Joint inventorsmust jointly apply for an internationalapplication.(c) A registered attorney or agent ofthe applicant may sign the internationalapplication Request and file theinternational application for theapplicant. A separate power of attorneyfrom each applicant may be required.(d) Any indication of differentapplicants for the purpose of differentDesignated Offices must be shown onthe Request portion of the internationalapplication.(e) Requests for changes in theindications concerning the applicant,agent, or common representative of aninternational application shall be madein accordance with PCT Rule 92bis andmay be required to be signed by allapplicants.(f) Requests for withdrawals of theinternational application, designations,priority claims, the Demand, orelections shall be made in accordancewith PCT Rule 90bis and must be signedby all applicants. A separate power ofattorney from the applicants will berequired for the purposes of any requestfor a withdrawal in accordance withPCT Rule 90bis which is not signed byall applicants.■ 51. Section 1.422 is revised to read asfollows:§ 1.422 Legal representative as applicantin an international application.If an inventor is deceased or underlegal incapacity, the legal representativeof the inventor may be an applicant inan international application whichdesignates the United States of America.VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00049 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6§ 1.423 [Removed and Reserved]■ 52. Section 1.423 is removed andreserved.■ 53. Section 1.424 is added to read asfollows:§ 1.424 Assignee, obligated assignee, orperson having sufficient proprietary interestas applicant in an international application.(a) A person to whom the inventor hasassigned or is under an obligation toassign the invention may be anapplicant in an international applicationwhich designates the United States ofAmerica. A person who otherwiseshows sufficient proprietary interest inthe matter may be an applicant in aninternational application whichdesignates the United States of Americaon proof of the pertinent facts and ashowing that such action is appropriateto preserve the rights of the parties.(b) Neither any showing requiredunder paragraph (a) of this section nordocumentary evidence of ownership orproprietary interest will be required orconsidered by the Office in theinternational stage, but will be requiredin the national stage in accordance withthe conditions and requirements of§ 1.46.■ 54. Section 1.431 is amended byrevising paragraph (b)(3)(iii) to read asfollows:§ 1.431 International applicationrequirements.* * * * *(b) * * *(3) * * *(iii) The name of the applicant, asprescribed (note §§ 1.421, 1.422, and1.424);* * * * *■ 55. Section 1.491 is amended byrevising the section heading andparagraph (b), and adding a newparagraph (c), to read as follows:§ 1.491 National stage commencement,entry, and fulfillment.* * * * *(b) An international application entersthe national stage when the applicanthas filed the documents and feesrequired by 35 U.S.C. 371(c)(1) and(c)(2) within the period set in § 1.495.(c) An international applicationfulfills the requirements of 35 U.S.C.371 when the national stage hascommenced under 35 U.S.C. 371(b) or(f) and all applicable requirements of 35U.S.C. 371 have been satisfied.■ 56. Section 1.492 is amended byrevising paragraph (h) to read asfollows:§ 1.492 National stage fees.* * * * *

sroberts on DSK5SPTVN1PROD with RULES48824 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations(h) Surcharge for filing any of thesearch fee, the examination fee, or theinventor’s oath or declaration after thedate of the commencement of thenational stage (§ 1.491(a)) pursuant to§ 1.495(c)By a small entity (§ 1.27(a)) .......... $65.00By other than a small entity ......... $130.00* * * * *■ 57. Section 1.495 is amended byrevising paragraphs (a), (c), (g), and (h)to read as follows:§ 1.495 Entering the national stage in theUnited States of America.(a) The applicant in an internationalapplication must fulfill therequirements of 35 U.S.C. 371 withinthe time periods set forth in paragraphs(b) and (c) of this section in order toprevent the abandonment of theinternational application as to theUnited States of America. The thirtymonthtime period set forth inparagraphs (b), (c), (d), (e) and (h) of thissection may not be extended.* * * * *(c)(1) If applicant complies withparagraph (b) of this section beforeexpiration of thirty months from thepriority date, the Office will notify theapplicant if he or she has omitted anyof:(i) A translation of the internationalapplication, as filed, into the Englishlanguage, if it was originally filed inanother language and if any Englishlanguage translation of the publicationof the international applicationpreviously submitted under 35 U.S.C.154(d) (§ 1.417) is not also a translationof 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 § 1.497), if adeclaration of inventorship incompliance with § 1.63 has not beenpreviously submitted in theinternational application under PCTRule 4.17(iv) within the time limitsprovided for in PCT Rule 26ter.1;(iii) The search fee set forth in§ 1.492(b);(iv) The examination fee set forth in§ 1.492(c); and(v) Any application size fee requiredby § 1.492(j).(2) A notice under paragraph (c)(1) ofthis section will set a time period withinwhich applicant must provide anyomitted translation, search fee set forthin § 1.492(b), examination fee set forthin § 1.492(c), and any application sizefee required by § 1.492(j) in order toavoid abandonment of the application.(3) The inventor’s oath or declarationmust also be filed within the periodspecified in paragraph (c)(2) of thissection, except that the filing of theinventor’s oath or declaration may bepostponed until the application isotherwise in condition for allowanceunder the conditions specified inparagraphs (c)(3)(i) through (c)(3)(iii) ofthis section.(i) The application contains anapplication data sheet in accordancewith § 1.76 filed prior to the expirationof the time period set in any noticeunder paragraph (c)(1) identifying:(A) Each inventor by his or her legalname;(B) A mailing address where theinventor customarily receives mail, andresidence, if an inventor lives at alocation which is different from wherethe inventor customarily receives mail,for each inventor.(ii) The applicant must file an oath ordeclaration in compliance with § 1.63,or substitute statement in compliancewith § 1.64, executed by or with respectto each actual inventor no later than theexpiration of the time period set in the‘‘Notice of Allowability’’ to avoidabandonment, when the applicant isnotified in a ‘‘Notice of Allowability’’that an application is otherwise incondition for allowance. The timeperiod set in a ‘‘Notice of Allowability’’is not extendable. See § 1.136(c). TheOffice may dispense with the noticeprovided for in paragraph (c)(1) of thissection if an oath or declaration under§ 1.63, or substitute statement under§ 1.64, executed by or with respect toeach actual inventor has been filedbefore the application is in condition forallowance.(iii) An international application inwhich the basic national fee under 35U.S.C. 41(a)(1)(F) has been paid and forwhich an application data sheet inaccordance with § 1.76 has been filedmay be treated as complying with 35U.S.C. 371 for purposes of eighteenmonthpublication under 35 U.S.C.122(b) and § 1.211 et seq.(4) The payment of the processing feeset forth in § 1.492(i) is required foracceptance of an English translationlater than the expiration of thirtymonths after the priority date. Thepayment of the surcharge set forth in§ 1.492(h) is required for acceptance ofany of the search fee, the examinationfee, or the inventor’s oath or declarationafter the date of the commencement ofthe national stage (§ 1.491(a)).(5) A ‘‘Sequence Listing’’ need not betranslated if the ‘‘Sequence Listing’’complies with PCT Rule 12.1(d) and thedescription complies with PCT Rule5.2(b).* * * * *(g) The documents and fees submittedunder paragraphs (b) and (c) of thisVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00050 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6section must be identified as asubmission to enter the national stageunder 35 U.S.C. 371. If the documentsand fees contain conflicting indicationsas between an application under 35U.S.C. 111 and a submission to enter thenational stage under 35 U.S.C. 371, thedocuments and fees will be treated as asubmission to enter the national stageunder 35 U.S.C. 371.(h) An international applicationbecomes abandoned as to the UnitedStates thirty months from the prioritydate if the requirements of paragraph (b)of this section have not been compliedwith within thirty months from thepriority date.■ 58. Section 1.496 is revised to read asfollows:§ 1.496 Examination of internationalapplications in the national stage.National stage applications havingpaid therein the search fee as set forthin § 1.492(b)(1) and examination fee asset forth in § 1.492(c)(1) may beamended subsequent to the date ofcommencement of national stageprocessing only to the extent necessaryto eliminate objections as to form or tocancel rejected claims. Such nationalstage applications will be advanced outof turn for examination.■ 59. Section 1.497 is revised to read asfollows:§ 1.497 Inventor’s oath or declarationunder 35 U.S.C. 371(c)(4).(a) When an applicant of aninternational application desires toenter the national stage under 35 U.S.C.371 pursuant to § 1.495, and adeclaration in compliance with § 1.63has not been previously submitted inthe international application under PCTRule 4.17(iv) within the time limitsprovided for in PCT Rule 26ter.1, theapplicant must file the inventor’s oathor declaration. The inventor, or eachindividual who is a joint inventor of aclaimed invention, in an application forpatent must execute an oath ordeclaration in accordance with theconditions and requirements of § 1.63,except as provided for in § 1.64.(b) An oath or declaration under§ 1.63 will be accepted as complyingwith 35 U.S.C. 371(c)(4) if it complieswith the requirements of §§ 1.63(a), (c)and (g). A substitute statement under§ 1.64 will be accepted as complyingwith 35 U.S.C. 371(c)(4) if it complieswith the requirements of §§ 1.64(b)(1),(c) and (e) and identifies the personexecuting the substitute statement. If anewly executed inventor’s oath ordeclaration under § 1.63 or substitutestatement under § 1.64 is not requiredpursuant to § 1.63(d), submission of the

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48825sroberts on DSK5SPTVN1PROD with RULEScopy of the previously executed oath,declaration, or substitute statementunder § 1.63(d)(1) is required to complywith 35 U.S.C. 371(c)(4).(c) If an oath or declaration under§ 1.63, or substitute statement under§ 1.64, meeting the requirements of§ 1.497(b) does not also meet therequirements of § 1.63 or § 1.64, an oath,declaration, substitute statement, orapplication data sheet in accordancewith § 1.76 to comply with § 1.63 or§ 1.64 will be required.■ 60. Section 1.530 is amended byrevising paragraph (l)(1) to read asfollows:§ 1.530 Statement by patent owner in exparte reexamination; amendment by patentowner in ex parte or inter partesreexamination; inventorship change in exparte or inter partes reexamination.* * * * *(l) * * *(1) When it appears in a patent beingreexamined that the correct inventor orinventors were not named, the Directormay, on petition of all the parties setforth in § 1.324(b)(1) and (b)(2),including the assignees, and satisfactoryproof of the facts and payment of the feeset forth in § 1.20(b), or on order of acourt before which such matter is calledin question, include in thereexamination certificate to be issuedunder § 1.570 or § 1.997 an amendmentnaming only the actual inventor orinventors. The petition must besubmitted as part of the reexaminationproceeding and must satisfy therequirements of § 1.324.* * * * *■ 61. Section 1.730 is amended byrevising paragraph (b)(1) to read asfollows:§ 1.730 Applicant for extension of patentterm; signature requirements.* * * * *(b) * * *(1) The patent owner in compliancewith § 3.73(c) of this chapter; or* * * * *PART 3—ASSIGNMENT, RECORDINGAND RIGHTS OF ASSIGNEE■ 62. The authority citation for part 3continues to read as follows:Authority: 15 U.S.C. 1123; 35 U.S.C.2(b)(2).■ 63. Section 3.31 is amended by addingnew paragraph (h) to read as follows:§ 3.31 Cover sheet content.* * * * *(h) The assignment cover sheetrequired by § 3.28 must contain aconspicuous indication of an intent toutilize the assignment as the requiredoath or declaration under § 1.63 of thischapter.■ 64. Section 3.71 is amended byrevising paragraphs (a), (b), and (c) toread as follows:§ 3.71 Prosecution by assignee.(a) Patents—conducting ofprosecution. One or more assignees asdefined in paragraph (b) of this sectionmay conduct prosecution of a nationalpatent application as the applicantunder § 1.46 of this title, or conductprosecution of a supplementalexamination or reexaminationproceeding, to the exclusion of theinventor or previous applicant or patentowner. Conflicts between purportedassignees are handled in accordancewith § 3.73(c)(3).(b) Patents—assignee(s) who canprosecute. The assignee(s) who mayconduct either the prosecution of anational application for patent as theapplicant under § 1.46 of this title or asupplemental examination orreexamination proceeding are:(1) A single assignee. An assignee ofthe entire right, title and interest in theapplication or patent, or(2) Partial assignee(s) together or withinventor(s). All partial assignees, or allpartial assignees and inventors whohave not assigned their right, title andinterest in the application or patent,who together own the entire right, titleand interest in the application or patent.A partial assignee is any assignee havingless than the entire right, title andinterest in the application or patent. Theword ‘‘assignee’’ as used in this chaptermeans with respect to patent matters thesingle assignee of the entire right, titleand interest in the application or patentif there is such a single assignee, or allof the partial assignees, or all of thepartial assignee and inventors who havenot assigned their interest in theapplication or patent, who together ownthe entire right, title and interest in theapplication or patent.(c) Patents—Becoming of record. Anassignee becomes of record as theapplicant in a national patentapplication under § 1.46 of this title,and in a supplemental examination orreexamination proceeding, by filing astatement in compliance with § 3.73(c)that is signed by a party who isauthorized to act on behalf of theassignee.* * * * *■ 65. Section 3.73 is revised to read asfollows:VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00051 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6§ 3.73 Establishing right of assignee totake action.(a) The original applicant is presumedto be the owner of an application for anoriginal patent, and any patent that mayissue therefrom, unless there is anassignment. The original applicant ispresumed to be the owner of atrademark application or registration,unless there is an assignment.(b) In order to request or take actionin a trademark matter, the assignee mustestablish its ownership of the trademarkproperty of paragraph (a) of this sectionto the satisfaction of the Director. Theestablishment of ownership by theassignee may be combined with thepaper that requests or takes the action.Ownership is established by submittingto the Office a signed statementidentifying the assignee, accompaniedby either:(1) Documentary evidence of a chainof title from the original owner to theassignee (e.g., copy of an executedassignment). The documents submittedto establish ownership may be requiredto be recorded pursuant to § 3.11 in theassignment records of the Office as acondition to permitting the assignee totake action in a matter pending beforethe Office; or(2) A statement specifying wheredocumentary evidence of a chain of titlefrom the original owner to the assigneeis recorded in the assignment records ofthe Office (e.g., reel and frame number).(c)(1) In order to request or take actionin a patent matter, an assignee who isnot the original applicant must establishits ownership of the patent property ofparagraph (a) of this section to thesatisfaction of the Director. Theestablishment of ownership by theassignee may be combined with thepaper that requests or takes the action.Ownership is established by submittingto the Office a signed statementidentifying the assignee, accompaniedby either:(i) Documentary evidence of a chainof title from the original owner to theassignee (e.g., copy of an executedassignment). The submission of thedocumentary evidence must beaccompanied by a statement affirmingthat the documentary evidence of thechain of title from the original owner tothe assignee was or concurrently isbeing submitted for recordationpursuant to § 3.11; or(ii) A statement specifying wheredocumentary evidence of a chain of titlefrom the original owner to the assigneeis recorded in the assignment records ofthe Office (e.g., reel and frame number).(2) If the submission is by an assigneeof less than the entire right, title andinterest (e.g., more than one assignee

48826 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationsexists) the Office may refuse to acceptthe submission as an establishment ofownership unless:(i) Each assignee establishes theextent (by percentage) of its ownershipinterest, so as to account for the entireright, title and interest in theapplication or patent by all partiesincluding inventors; or(ii) Each assignee submits a statementidentifying the parties includinginventors who together own the entireright, title and interest and stating thatall the identified parties own the entireright, title and interest.(3) If two or more purported assigneesfile conflicting statements underparagraph (c)(1) of this section, theDirector will determine which, if any,purported assignee will be permitted tocontrol prosecution of the application.(d) The submission establishingownership under paragraph (b) or (c) ofthis section must show that the personsigning the submission is a personauthorized to act on behalf of theassignee by:(1) Including a statement that theperson signing the submission isauthorized to act on behalf of theassignee;(2) Being signed by a person havingapparent authority to sign on behalf ofthe assignee; or(3) For patent matters only, beingsigned by a practitioner of record.PART 5—SECRECY OF CERTAININVENTIONS AND LICENSES TOEXPORT AND FILE APPLICATIONS INFOREIGN COUNTRIES■ 66. The authority citation for 37 CFRpart 5 continues to read as follows:Authority: 35 U.S.C. 2(b)(2), 41, 181–188,as amended by the Patent Law Foreign FilingAmendments Act of 1988, Pub. L. 100–418,102 Stat. 1567; the Arms Export Control Act,as amended, 22 U.S.C. 2751 et seq.; theAtomic Energy Act of 1954, as amended, 42U.S.C. 2011 et seq.; the Nuclear NonProliferation Act of 1978, 22 U.S.C. 3201 etseq.; and the delegations in the regulationsunder these Acts to the Director (15 CFR370.10(j), 22 CFR 125.04, and 10 CFR 810.7).■ 67. Section 5.25 is amended byrevising paragraphs (a)(3)(iii) and (b) toread as follows:§ 5.25 Petition for retroactive license.(a) * * *(3) * * *(iii) An explanation of why thematerial was filed abroad through errorwithout the required license under§ 5.11 first having been obtained, and* * * * *(b) The explanation in paragraph (a)of this section must include a showingof facts rather than a mere allegation ofaction through error. The showing offacts as to the nature of the error shouldinclude statements by those personshaving personal knowledge of the actsregarding filing in a foreign country andshould be accompanied by copies of anynecessary supporting documents suchas letters of transmittal or instructionsfor filing. The acts which are alleged toconstitute error should cover the periodleading up to and including each of theproscribed foreign filings.* * * * *PART 10—REPRESENTATION OFOTHERS BEFORE THE PATENT ANDTRADEMARK OFFICE■ 68. The authority citation for 37 CFRpart 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.■ 69. Section 10.23 is amended byremoving and reserving paragraph(c)(11).§ 10.23 Misconduct.* * * * *(c) * * *(11) [Reserved]* * * * *PART 41—PRACTICE BEFORE THEBOARD OF PATENT APPEALS ANDINTERFERENCES■ 70. The authority citation for 37 CFRpart 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.■ 71. Section 41.9 is amended byrevising paragraph (a) to read as follows:§ 41.9 Action by owner.(a) Entire interest. An owner of theentire interest in an application orpatent involved in a Board proceedingmay act in the proceeding to theexclusion of the inventor (see §§ 3.71and 3.73 of this title).* * * * *Dated: July 17, 2012.David J. Kappos,Under Secretary of Commerce for IntellectualProperty and Director of the United StatesPatent and Trademark Office.[FR Doc. 2012–17907 Filed 8–13–12; 8:45 am]BILLING CODE 3510–16–Psroberts on DSK5SPTVN1PROD with RULESVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00052 Fmt 4701 Sfmt 9990 E:\FR\FM\14AUR6.SGM 14AUR6