UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

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●●●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
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 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 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,
Page 52 and 53: 48776 Federal Register / Vol. 77, N
Page 54 and 55: sroberts on DSK5SPTVN1PROD with RUL
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48808 Federal Register / Vol. 77, N
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