UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

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●●●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
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 18 and 19: But 37 CFR § 1.63 says:A person ma
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
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Page 36 and 37: New Rule-46 practice67●●●Rule
Page 38 and 39: Consequences of AIA for PCT filers
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