UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

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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
Page 1: UNIFORM CERTIFICATE OF ATTENDANCE F
Page 4 and 5: SPTO explains the America Invents A
Page 6 and 7: PTO/SB/01A (01-09)Approved for use
Page 8 and 9: PTO/SB/ (06-12)Approved for use thr
Page 10 and 11: PTO/ (06-12)Approved for use throug
Page 12 and 13: PTO/(06-1Approved for use through 0
Page 14 and 15: What will change about the oath ord
Page 16 and 17: Action item●●●If you have not
Page 20 and 21: ●●●Combined assignment anddec
Page 22 and 23: ●●●●●●Consequences of i
Page 24 and 25: How to file the ADSs●●If you pr
Page 26 and 27: Supplemental ADSAny ADS filed after
Page 28 and 29: Provisionals●●●Rules are a bi
Page 30 and 31: Are all assignees applicants?●●
Page 32 and 33: Substitute Statement●●●This f
Page 34 and 35: ●●●Docket consequences of the
Page 36 and 37: New Rule-46 practice67●●●Rule
Page 38 and 39: Consequences of AIA for PCT filers
Page 40 and 41: If you are entrusted the US nationa
Page 42 and 43: ●●●Choosing between a “bypa
Page 44 and 45: ●●●Getting your name and addr
Page 46 and 47: Exercises relating to September 16,
Page 48 and 49: Important AIA webinar September 6
Page 50 and 51: Exercises relating to September 16,
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