UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

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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
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
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Page 36 and 37: New Rule-46 practice67●●●Rule
Page 38 and 39: Consequences of AIA for PCT filers
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
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