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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