UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48779sroberts on DSK5SPTVN1PROD with RULESthe inventor’s oath or declaration are asfollows: (1) 37 CFR 1.63 pertains to aninventor’s oath or declaration under 35U.S.C. 115(a) or an assignment under 35U.S.C. 115(e) that contains thestatements required in an inventor’soath or declaration by the inventor or ajoint inventor; and (2) 37 CFR 1.64pertains to a substitute statement under35 U.S.C. 115(d) if the inventor isdeceased, is legally incapacitated,cannot be found or reached after adiligent effort was made, or has refusedto execute the oath or declaration.To further clarify the rules, andbecause of the statutory change from aninventor-applicant system to anassignee-applicant system, the Officeexplains the terms ‘‘applicant’’ and‘‘assignee’’ as now used in the rules ofpractice. The term ‘‘applicant’’ meansthe inventor (all joint inventorscollectively) if there is no assignee, or ifthe assignee has opted not to file (make)the application for patent and not totake over prosecution to the exclusion ofthe inventor. The term ‘‘applicant’’means the assignee (or obligatedassignee or person who otherwise showssufficient proprietary interest in thematter) if the assignee (or obligatedassignee or person who otherwise showssufficient proprietary interest in thematter) has filed the application forpatent, or if the assignee has taken overprosecution of the application to theexclusion of the inventor. The term‘‘assignee’’ means the assignee of theentire right, title and interest in theapplication regardless of whether theassignee filed the application for patentor has taken over prosecution of theapplication to the exclusion of theinventor.Under 35 U.S.C. 118, as amended,provides that where the Director grantsa patent on an application filed under35 U.S.C. 118 by a person other than theinventor, the Office must grant thepatent to the real party in interest.Therefore, the Office is requiringapplicants other than the inventor tonotify the Office of any change in thereal party in interest in a reply to anotice of allowance. Absent any suchnotification, the Office will presume nochange has occurred and will grant thepatent to the real party in interest ofrecord.The Office plans to continue to usethe inventor’s name for application andpatent identification purposes asinventor names tend to provide a moredistinct identification than assigneenames.Changes to Oath or DeclarationPractice: The Office proposed in thenotice of proposed rulemaking torequire that an oath or declarationinclude the names of all inventors, aswell as the ‘‘reviewed and understands’’and ‘‘duty to disclose’’ clauses formerlyrequired by 37 CFR 1.63(b)(2) and (b)(3).See Changes to Implement theInventor’s Oath or DeclarationProvisions of the Leahy-Smith AmericaInvents Act, 77 FR at 1000. The publicsubmitted a number of commentssuggesting that the Office should notrequire that an oath or declaration nameall of the inventors or require anystatements other than those required by35 U.S.C. 115(b).The Office is, in this final rule,streamlining a number of oath ordeclaration requirements (vis-a-vis boththe proposed and former requirements)based upon the public comments. First,the Office is revising 37 CFR 1.63 tostate that an inventor’s oath ordeclaration need not indicate the nameof each inventor if the applicantprovides an application data sheetindicating the legal name, residence,and mailing address of each inventor.Second, the Office is revising 37 CFR1.63 to eliminate the requirement thatan inventor’s oath or declaration statethat the person executing the oath ordeclaration has reviewed andunderstands the contents of theapplication, and acknowledges the dutyto disclose to the Office all informationknown to the person to be material topatentability as defined in 37 CFR 1.56.37 CFR 1.63 will simply state that aperson may not execute an oath ordeclaration for an application unlessthat person has reviewed andunderstands the contents of theapplication, and is aware of the duty todisclose to the Office all informationknown to the person to be material topatentability as defined in 37 CFR 1.56.Third, the Office is revising 37 CFR 1.63to eliminate the requirements that anydeclaration under 35 U.S.C. 115 containan acknowledgement that willful falsestatements may jeopardize the validityof the application or any patent issuingthereon, and that all statements made ofthe declarant’s own knowledge are trueand that all statements made oninformation and belief are believed to betrue. Finally, since 35 U.S.C. 115 nolonger contains a requirement that theinventor identify his country ofcitizenship, the Office will no longerrequire this information in the oath ordeclaration.As revised by the AIA, 35 U.S.C. 115(entitled ‘‘Inventor’s oath ordeclaration’’) provides for an oath ordeclaration (35 U.S.C. 115(a)), substitutestatement (35 U.S.C. 115(d)), and anassignment-statement (35 U.S.C. 115(e)),and any substitute statement orassignment-statement must contain aVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00005 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6willful false statements clause pursuantto 35 U.S.C. 115(i). The requirement forthe willful false statements clause hasthe effect of making a substitutestatement under 35 U.S.C. 115(d) or anassignment-statement under 35 U.S.C.115(e) properly denominated as a‘‘declaration.’’ See previous discussionof 35 U.S.C. 115(i). Consistent withthese statutory provisions, and theprovisions of 35 U.S.C. 111(a) and371(c) which require that an applicationcontain an ‘‘oath or declaration’’ asprescribed by 35 U.S.C. 115 (see 35U.S.C. 111(a)(2)(C) and 371(c)(4)), theOffice is employing the phrase‘‘inventor’s oath or declaration’’ in therules of practice to mean an oath ordeclaration as provided for in 35 U.S.C.115(a), a substitute statement asprovided for in 35 U.S.C. 115(d), or anassignment-statement as provided for in35 U.S.C. 115(e).Specifically, when the rules reference‘‘an inventor’s oath or declaration,’’ itmeans an oath or declaration under 35U.S.C. 115(a), substitute statementunder 35 U.S.C. 115(d), or assignmentstatementunder 35 U.S.C. 115(e)executed by or with respect to anindividual (whether the inventor or ajoint inventor) for an application. Thephrase ‘‘the inventor’s oath ordeclaration’’ means the oaths ordeclarations under 35 U.S.C. 115(a),substitute statements under 35 U.S.C.115(d), or assignment-statements under35 U.S.C. 115(e) executed by theinventive entity. With respect to anapplication naming more than oneinventor, any reference to ‘‘theinventor’s oath or declaration’’ meansthe oaths, declarations, or substitutestatements that have been collectivelyexecuted by or with respect to all of thejoint inventors, unless otherwise clearfrom the context.The Office proposed in the notice ofproposed rulemaking to continue thepractice of requiring the inventor’s oathor declaration before examination. SeeChanges to Implement the Inventor’sOath or Declaration Provisions of theLeahy-Smith America Invents Act, 77FR at 984–85. The public submitted anumber of comments suggesting that theOffice should not require the inventor’soath or declaration before an applicationis in condition for allowance. Basedupon the public comments, the Office isproviding in this final rule thatapplicants may postpone filing theinventor’s oath or declaration until theapplication is otherwise in condition forallowance if the applicant provides anapplication data sheet beforeexamination indicating the name,residence, and mailing address of eachinventor. The Office will continue the