UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

sroberts on DSK5SPTVN1PROD with RULES48780 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationspractice permitted by 35 U.S.C.111(a)(3) of requiring a surcharge(currently $130) to recover the cost ofthe special processing and additionalnotices for original (non-reissue)applications that are not complete onfiling. If the applicant, however,provides a signed application data sheetproviding the name, residence, andmailing address of each inventor, theOffice will not require an additional feebeyond the surcharge simply topostpone filing the inventor’s oath ordeclaration until the application isotherwise in condition for allowance.The Office indicated in the notice ofproposed rulemaking that the Officeneeds to know who the inventors areprior to examination and thatpostponing the requirement for theinventor’s oath or declaration untilallowance would add to overall patentpendency. See Changes to Implementthe Inventor’s Oath or DeclarationProvisions of the Leahy-Smith AmericaInvents Act, 77 FR at 984. The Office isproposing in a separate rulemaking anadditional fee of $1,000 ($500 for asmall entity, and $250 for a microentity) for a request to correctinventorship in an application after thefirst Office action on the merits toencourage reasonable diligence and abona fide effort in ascertaining theactual inventorship and providing thatinformation to the Office prior toexamination. The Office is alsoconsidering proposing (in a separaterulemaking) changes to the patent termadjustments provisions of 37 CFR 1.704(defining the circumstances thatconstitute a failure of the applicant toengage in reasonable efforts to concludeprocessing or examination of anapplication, and which result in areduction of patent term adjustment) toensure that applicants who delay theissuance of a notice of allowance under35 U.S.C. 151 do not gain patent termadjustment as a consequence of theirdelay.Applicants entering the national stageunder 35 U.S.C. 371 from aninternational application under thePatent Cooperation Treaty (PCT) mustbe mindful of the patent termadjustment consequences of this courseof action. The Office is changing itsrules to provide that a PCT internationalapplication enters the national stagewhen the applicant files the fee requiredby 35 U.S.C. 371(c)(1) (the national feeprovided in 35 U.S.C. 41(a)), and thedocuments required by 35 U.S.C.371(c)(2) (a copy of the internationalapplication (unless not required under35 U.S.C. 371(a) or alreadycommunicated by the InternationalBureau), and a translation into theEnglish language of the internationalapplication, if it was filed in anotherlanguage)) within the period set in 37CFR 1.495. The fourteen-month timeframe in 35 U.S.C. 154(b)(1)(A)(i)(II) forissuing an Office action under 35 U.S.C.132 or notice of allowance under 35U.S.C. 151 is measured from ‘‘the dateon which an international applicationfulfilled the requirements of section371,’’ which includes the filing of theinventor’s oath or declaration. See 35U.S.C. 371(c)(4). This process isdiscussed in detail in the Manual ofPatent Examining Procedure (MPEP).See MPEP § 1893.03(b) (8th ed. 2001)(Rev. 8, July 2010).Changes Pertaining to SubstituteStatements: In the notice of proposedrulemaking, the Office proposed torequire a petition with showings and afee for applicants executing a substitutestatement in lieu of an oath ordeclaration as required by former 37CFR 1.47. See Changes to Implement theInventor’s Oath or DeclarationProvisions of the Leahy-Smith AmericaInvents Act, 77 FR at 988–89, and 999.The public submitted a number ofcomments suggesting that the Officeshould not require proof or showingsfrom applicants executing a substitutestatement in lieu of an oath ordeclaration. The Office is in this finalrule streamlining a number of proposedsubstitute statement requirements (vis-avisboth the proposed and formerrequirements of 37 CFR 1.47) basedupon the public comments. For anassignee or obligated assignee filing theapplication as the applicant, the finalrule provides that the documentaryevidence of ownership (e.g., assignmentfor an assignee, employment agreementfor an obligated assignee) should berecorded as provided for in 37 CFR part3 no later than the date the issue fee ispaid in the application. For a personwho otherwise shows sufficientproprietary interest in the matter to filethe application as the applicant, thefinal rule provides that the showing ofproprietary interest must be filed in theapplication, the fee set forth in 37 CFR1.17(g) paid, and a petition grantedbefore the person who has shownsufficient proprietary interest in thematter will be considered the applicant.The fee for persons who otherwise showsufficient proprietary interest in thematter is to recover the cost of thespecial processing and Official Gazettenotice required for applications that arefiled and prosecuted on behalf of thenonsigning inventor by a person who isnot the assignee or obligated assignee.The Office will also provide that anassignee, an obligated assignee, or aperson who otherwise shows sufficientVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00006 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6proprietary interest in the matter who isthe applicant may execute a substitutestatement in lieu of an oath ordeclaration if the applicant identifies:(1) The circumstances permitting theperson to execute the substitutestatement in lieu of an oath ordeclaration (e.g., whether thenonsigning inventor cannot be reachedafter a diligent effort was made, or hasrefused to execute the oath ordeclaration); (2) the person executingthe substitute statement with respect tothe nonsigning inventor and therelationship of such person to thenonsigning inventor; and (3) the lastknown address of the nonsigninginventor.Changes Pertaining to ReissuePractice: Consistent with theamendments made to 35 U.S.C. 115 and251, the Office is revising reissuepractice (vis-a-vis the formerrequirements) to: (1) Delete therequirement for a reissue inventor’s oathor declaration to include a statementthat all errors arose without anydeceptive intent on the part of theapplicant; (2) eliminate the requirementfor a supplemental inventor’s oath ordeclaration; (3) require the inventor’soath or declaration for a reissueapplication to identify a claim that theapplication seeks to broaden if thereissue application seeks to enlarge thescope of the claims of the patent (a basisfor the reissue is the patentee claimingless than the patentee had the right toclaim in the patent); and (4) clarify thata single claim containing both abroadening and a narrowing of theclaimed invention is to be treated as abroadening. These changes will providefor more efficient processing of reissueapplications and improve the quality ofpatents, in accordance with the intent ofthe AIA. In order to implement theconforming amendment made to 35U.S.C. 251 in section 4(b)(2) of the AIA,the Office is also revising the rules topermit an assignee of the entire interestwho filed an application under 35U.S.C. 118 that was patented to sign theinventor’s oath or declaration in areissue application of such patent (evenif the reissue application is a broadeningreissue).Miscellaneous Changes: The Office,under the authority provided by 35U.S.C. 2(b)(2), is also revising the rulesof practice for power of attorney,prosecution of an application by anassignee, and foreign priority anddomestic benefit claims to facilitateprosecution of applications and improvethe quality of patents. Juristic entities(organizations) who seek to prosecute anapplication, including taking overprosecution of an application, will need