UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

sroberts on DSK5SPTVN1PROD with RULES48786 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationsalso refers to § 1.64 concerning theexecution of a substitute statement byan assignee, person to whom theinventor is under an obligation to assignthe invention, or a person whootherwise shows sufficient proprietaryinterest in the matter.Section 1.46(e) provides that if apatent is granted on an application filedunder § 1.46 by a person other than theinventor, the patent shall be granted tothe real party in interest (e.g., thecurrent assignee for an application thathas been assigned). Otherwise, thepatent may be issued to the assignee orjointly to the inventor and the assigneeas provided in § 3.81.Section 1.46(e) also provides thatwhere a real party in interest has filedan application under § 1.46, theapplicant shall notify the Office of anychange in the real party in interest nolater than payment of the issue fee, andthat the Office will treat the absence ofsuch a notice as an indication that therehas been no change in the real party ininterest. This provision implements therequirement of 35 U.S.C. 118 that: ‘‘[i]fthe Director grants a patent on anapplication filed under this section by aperson other than the inventor, thepatent shall be granted to the real partyin interest and upon such notice to theinventor as the Director considers to besufficient.’’ Section 3.81 provides thatan ‘‘application may issue in the nameof the assignee * * * where a requestfor such issuance is submitted withpayment of the issue fee.’’ This isaccomplished by providing the assigneeinformation in box 3 of the Part B—Fee(s) Transmittal form, PTOL–85B. Theuse of box 3 will be required where thereal party in interest has changed fromfiling of the application and theapplication was filed pursuant to § 1.46.Section 1.46(f) provides that theOffice may publish notice of the filingof the application by a person whootherwise shows sufficient proprietaryinterest in the Official Gazette.Section 1.47: Section 1.47 is removedand reserved. As discussed previously,execution of a substitute statement inlieu of an oath or declaration is nowprovided for in § 1.64.Section 1.48: Section 1.48 is amendedto no longer include a ‘‘withoutdeceptive intention’’ requirement as thisrequirement has been eliminated from35 U.S.C. 116 in section 20 of the AIA.Section 1.48 is also amended to nolonger require the written consent ofany assignee as the Office does notrequire express written consent by anassignee to other amendments to anapplication.Section 1.48(a) provides for correctionof inventorship in a nonprovisionalapplication filed either under 35 U.S.C.111(a) or resulting from an internationalapplication in which the basic nationalfee under 35 U.S.C. 41(a)(1)(F) has beenpaid. Section 1.48(a) provides that anyrequest to correct or change theinventorship once the inventorship hasbeen established under § 1.41 mustinclude: (1) An application data sheet inaccordance with § 1.76 that identifieseach inventor by his or her legal name;and (2) the processing fee set forth in§ 1.17(i). Due to the streamlining of therequirements for correction ofinventorship, it is no longer necessary tohave separate provisions based uponwhether the correction is necessitatedby the original inventorship being inerror or by an amendment to the claims.Section 1.48(b) also provides that anoath or declaration as required by § 1.63,or a substitute statement in compliancewith § 1.64, will be required for anyactual inventor who has not yetexecuted such an oath or declaration.Section 1.48(c) is currently reserved.Section 1.48(d) provides forcorrection of inventorship in aprovisional application filed under 35U.S.C. 111(b). Section 1.48(d) providesthat once a cover sheet as prescribed by§ 1.51(c)(1) is filed in a provisionalapplication, any request to correct orchange the inventorship must include:(1) a request, signed by a party set forthin § 1.33(b), to correct the inventorshipthat identifies each inventor by his orher legal name; and (2) the processingfee set forth in § 1.17(q).Section 1.48(e) provides that theOffice may require such otherinformation as may be deemedappropriate under the particularcircumstances surrounding thecorrection of inventorship.Section 1.48(f) provides forcorrections to the name of the inventoror a joint inventor, or the order of thenames of joint inventors. Due to thestreamlining of the requirements forcorrection of inventorship, it is nolonger necessary to have distinctprocedures for correction ofinventorship and for correction to thename of an inventor or to the order ofthe names of the inventors. Correctionsto the name of an inventor or to theorder of the names of the inventors wereformerly provided for as exceptionprocesses, such as under § 1.182. SeeMPEP §§ 605.04(b), (c), and (f). Section1.48(f) specifically provides that anyrequest to correct or update the name ofthe inventor or a joint inventor, or theorder of the names of joint inventors, ina nonprovisional application mustinclude: (1) An application data sheet inaccordance with § 1.76 that identifieseach inventor by his or her legal nameVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00012 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6in the desired order; and (2) theprocessing fee set forth in § 1.17(i).Section 1.48(g) provides that theprovisions of § 1.48 do not apply toreissue applications. Section 1.48(g) alsorefers to §§ 1.171 and 1.175 forcorrection of inventorship in a patentvia a reissue application.Section 1.48(h) provides a crossreference to § 1.324 for correction ofinventorship in a patent.Section 1.48(i) provides for correctionof inventorship in an interference orcontested case before the Patent Trialand Appeal Board. Section 1.48(i)provides that in an interference underpart 41, subpart D, of this title, a requestfor correction of inventorship in anapplication must be in the form of amotion under § 41.121(a)(2) of this title.Section 1.48(i) also provides that in acontested case under part 42, subpart D,of this title, a request for correction ofinventorship in an application must bein the form of a motion under § 42.22 ofthis title. Section 1.48(i) finally providesthat the motion under §§ 41.121(a)(2) or42.22 of this title must comply with therequirements of § 1.48(a).Section 1.51: Section 1.51(b)(2) isamended to refer to ‘‘the inventor’s oathor declaration’’ and to cross-reference§§ 1.63 and 1.64. See previousdiscussion of § 1.16(f).Section 1.52: Section 1.52(b) and (c)are amended to refer to ‘‘the inventor’soath or declaration.’’ See previousdiscussion of § 1.16(f).Section 1.52(b) is amended to alsorefer to supplemental examinationproceedings.Section 1.52(c) is amended to providethat interlineation, erasure, cancellation,or other alteration of the applicationpapers may be made before or after thesigning of the inventor’s oath ordeclaration referring to thoseapplication papers, provided that thestatements in the inventor’s oath ordeclaration remain applicable to thoseapplication papers. Thus, § 1.52(c) nolonger prohibits changes after executionof the inventor’s oath or declaration.Section 1.52(c) also provides that asubstitute specification (§ 1.125) may berequired if the application papers do notcomply with paragraphs (a) and (b) ofthis section.Section 1.52(d) is amended to belimited to nonprovisional or provisionalapplications filed under 35 U.S.C.111(a) and (b), respectively.Section 1.53: Section 1.53 is amendedto change the phrase ‘‘oath ordeclaration’’ to the phrase ‘‘theinventor’s oath or declaration’’throughout. See previous discussion of§ 1.16(f).