UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48777sroberts on DSK5SPTVN1PROD with RULESdeclarant, and the individual believeshimself or herself to be the originalinventor or an original joint inventor ofa claimed invention in the application.125 Stat. at 294. There is no longer arequirement in the statute that theinventor must state his country ofcitizenship or that the inventor believeshimself or herself to be the ‘‘first’’inventor of the subject matter (process,machine, manufacture, or compositionof matter) sought to be patented.Amended 35 U.S.C. 115(c) providesthat the Director may specify additionalinformation relating to the inventor andto the invention that is required to beincluded in an oath or declaration under35 U.S.C. 115(a). Id.Amended 35 U.S.C. 115(d)(1)provides that, in lieu of execution of anoath or declaration by an inventor under35 U.S.C. 115(a), the applicant forpatent may provide a substitutestatement under the circumstancesdescribed in 35 U.S.C. 115(d)(2), andsuch additional circumstances as theDirector specifies by regulation. Id. 35U.S.C. 115(d)(2) provides that anapplicant may provide a substitutestatement where an inventor is unableto file the oath or declaration under 35U.S.C. 115(a) because the individual isdeceased, under legal incapacity, orcannot be found or reached afterdiligent effort, or an individual is underan obligation to assign the invention buthas refused to make the oath ordeclaration required under 35 U.S.C.115(a). Id. Therefore, while an assignee,a person under an obligation to assignthe invention (an ‘‘obligated assignee’’),or a person who otherwise showssufficient proprietary interest in thematter may make an application forpatent as provided for in 35 U.S.C. 118,an oath or declaration (or an assignmentcontaining the required statements) byeach inventor is still required, except inthe circumstances set forth in 35 U.S.C.115(d)(2) and in any additionalcircumstances specified by the Directorin the regulations. The contents of asubstitute statement are set forth in 35U.S.C. 115(d)(3). Specifically, 35 U.S.C.115(d)(3) provides that the substitutestatement must identify the individualwith respect to whom the statementapplies, set forth the circumstances forthe permitted basis for filing thesubstitute statement in lieu of the oathor declaration under 35 U.S.C. 115(a),and contain any additional information,including any showing, required by theDirector. Id.Amended 35 U.S.C. 115(e) providesfor making the statements requiredunder 35 U.S.C. 115(b) and (c) in anassignment of record and specificallypermits an individual who is under anobligation of assignment of anapplication to include the requiredstatements in the assignment executedby the individual, in lieu of filing thestatements separately. Id.Amended 35 U.S.C. 115(f) providesthat a notice of allowance under 35U.S.C. 151 may be provided to anapplicant only if the applicant has filedeach required oath or declaration under35 U.S.C. 115(a), substitute statementunder 35 U.S.C. 115(d), or recordedassignment meeting the requirements of35 U.S.C. 115(e). Id.The changes to 35 U.S.C. 115 in theAIA do not affect 35 U.S.C. 111(a)(2),which continues to require that anapplication filed under 35 U.S.C. 111(a)include an oath or declaration asprescribed by 35 U.S.C. 115, and 35U.S.C. 111(a)(3), which continues topermit the oath or declaration to besubmitted after the filing date of theapplication, but within such period andunder the conditions prescribed by theDirector, including payment of thecurrently charged surcharge. See 35U.S.C. 111(a)(2)(C) and (a)(3), and 37CFR 1.16(f). Likewise, 35 U.S.C. 371(c)continues to require an oath ordeclaration complying with therequirements of 35 U.S.C. 115 for aninternational application to enter thenational stage, and 35 U.S.C. 371(d)continues to require the oath ordeclaration to be submitted within theperiod prescribed by the Director, andwith the payment of any surchargerequired by the Director, if notsubmitted by the date of thecommencement of the national stage.See 35 U.S.C. 371(c)(4) and (d).Amended 35 U.S.C. 115(g)(1) providesthat the requirements under 35 U.S.C.115 shall not apply to an individualnamed as the inventor or a jointinventor in an application that claimsbenefit under 35 U.S.C. 120, 121, or365(c) of an earlier-filed application, if:(1) An oath or declaration meeting therequirements of 35 U.S.C. 115(a) wasexecuted by the individual and wasfiled in connection with the earlier-filedapplication; (2) a substitute statementmeeting the requirements of 35 U.S.C.115(d) was filed in connection with theearlier-filed application with respect tothe individual; or (3) an assignmentmeeting the requirements of 35 U.S.C.115(e) was executed with respect to theearlier-filed application by theindividual and was recorded inconnection with the earlier-filedapplication. 125 Stat. at 294–95. 35U.S.C. 115(g)(2) provides that theDirector may still require a copy of theexecuted oath or declaration, thesubstitute statement, or the assignmentfiled in connection with the earlier-filedVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00003 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6application to be filed in the later-filedapplication. Id.Amended 35 U.S.C. 115(h)(1)provides that any person making astatement under 35 U.S.C. 115 maywithdraw, replace, or otherwise correctthe statement at any time. 35 U.S.C.115(h)(1) also provides that the Directorshall establish regulations under whichadditional statements may be filed whena change is made in the naming of theinventor requiring the filing of one ormore additional statements under 35U.S.C. 115. Id. 35 U.S.C. 115(h)(2)provides that if an individual hasexecuted an oath or declaration meetingthe requirements of 35 U.S.C. 115(a) oran assignment meeting the requirementsof 35 U.S.C. 115(e), then the Directormay not require that individual tosubsequently make any additional oath,declaration, or other equivalentstatement in connection with theapplication or any patent issuingthereon. Id. 35 U.S.C. 115(h)(3) providesthat a patent shall not be invalid orunenforceable based upon the failure tocomply with a requirement under thissection if the failure is remedied asprovided under 35 U.S.C. 115(h)(1). Id.Amended 35 U.S.C. 115(i) providesthat any declaration or statement filedpursuant to 35 U.S.C. 115 must containan acknowledgement that any willfulfalse statement made in the declarationor statement is punishable under 18U.S.C. 1001 by fine or imprisonment ofnot more than 5 years, or both. Id. Thisis similar to the requirements in preexisting35 U.S.C. 25 for the use of adeclaration in lieu of an oath in anOffice proceeding. See 35 U.S.C. 25(b)(‘‘Whenever such written declaration isused, the document must warn thedeclarant that willful false statementsand the like are punishable by fine orimprisonment, or both (18 U.S.C.1001).’’).Section 4(a)(2) of the AIA amends 35U.S.C. 121 to eliminate the sentence thatprovided for the Director to dispensewith signing and execution by theinventor in a divisional applicationwhen the divisional application isdirected solely to subject matterdescribed and claimed in the originalapplication as filed. Id. This amendmentto 35 U.S.C. 121 is consistent with 35U.S.C. 115(g)(1) because the inventornamed in a divisional applicationwould not need to execute an oath ordeclaration or equivalent statement forthe divisional application regardless ofwhether the divisional application isdirected solely to subject matterdescribed and claimed in the originalapplication.