UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

sroberts on DSK5SPTVN1PROD with RULES48788 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationswith § 1.64, executed by or with respectto each actual inventor.Section 1.53(f)(4) contains theprovisions of former § 1.53(f)(3).Section 1.53(f)(5) contains theprovisions of former § 1.53(f)(4).Section 1.53(f)(6) contains theprovisions of former § 1.53(f)(5).Section 1.53(h) is amended to providean exception for the situation in whichthe inventor’s oath or declaration is notfiled until the application is otherwisein condition for allowance under§ 1.53(f)(3).Section 1.55: Sections 1.55(a)(1)(i),(c), and (d)(1)(ii) are amended to requirea foreign priority claim be identified inan application data sheet (§ 1.76). 35U.S.C. 119(b) does not specify theparticular location in the application forsetting forth a claim to the benefit of aprior foreign application. Additionally,§ 1.55 formerly did not specify where inthe application a foreign priority claimmust be, but former § 1.63(c) requiredthat the foreign priority claim be in anapplication data sheet or identified inthe oath or declaration. The change to§ 1.55 in this final rule establishes asingle location for the foreign priorityclaim in the application data sheet,which would facilitate applicationprocessing by providing practitionerswith a clear location for the foreignpriority claim, and the Office with onelocation to locate the foreign priorityclaim quickly. Formerly, the Office hadto look at the specification, amendmentsto the specification, the oath ordeclaration, the application data sheet(if provided), and elsewhere todetermine the priority claim. Inaddition, when applicants providedinconsistent information relating to theclaim for foreign priority, the Office hadto then determine which priority claimgoverned.Additionally, providing thisinformation in a single location willfacilitate review of patents and patentapplication publications, becauseapplications frequently set forth abenefit and/or foreign priority claim inthe first sentence(s) of the specification,which is superseded by an applicationdata sheet that includes a differentbenefit or foreign priority claim, andthus the benefit claim and/or foreignpriority information contained on thefront page of the patent or patentapplication publication is different fromthe benefit claim and/or foreign priorityclaim included in the first sentence(s) ofthe specification. While the benefit and/or foreign priority claim on the frontpage of the patent or patent applicationpublication is usually correct, anyone(including an examiner, a practitioner orthe public) reviewing the patent orpatent application publication mustreview the file history of the applicationto be certain of its correctness. Sincemost applications are filed with anapplication data sheet, requiring thebenefit and/or foreign priority claims tobe included in the application datasheet will not require most practitionersto change their practice.35 U.S.C. 119(b) provides that theforeign application is identified byspecifying the application number,country or intellectual propertyauthority, and filing date of each foreignapplication for which priority isclaimed. Section 1.55(a)(1) and (c) thusprovide that the foreign priority claimmust identify the foreign application forwhich priority is claimed by specifyingthe application number, country (orintellectual property authority), day,month, and year of its filing. Inaddition, § 1.55(a)(1)(i) requiresidentification of any foreign applicationhaving a filing date before that of theapplication for which priority isclaimed by specifying the applicationnumber, country (or intellectualproperty authority), day, month, andyear of its filing. Providing thisinformation in the application datasheet constitutes the claim for foreignpriority as required by 35 U.S.C. 119(b)and § 1.55(a).Section 1.56: Section 1.56(c)(3) isamended to indicate that its provisionsalso apply to every other person who issubstantively involved in thepreparation or prosecution of theapplication and who is associated withthe inventor, the applicant, an assignee,or anyone to whom there is anobligation to assign the application.This change is for consistency with thechange in practice concerning who isthe applicant for patent in § 1.42.Section 1.59: Section 1.59(a)(2) isamended to refer to any preliminaryamendment present on the filing date ofthe application in the parenthetical forconsistency with § 1.115(a)(1).Section 1.63: Section 1.63(a) providesthat the inventor, or each individualwho is a joint inventor of a claimedinvention, in an application for patentmust execute an oath or declarationdirected to the application, except asprovided for in § 1.64. See 35 U.S.C.115(a). Section 1.63(a) further providesthat an oath or declaration must: (1)Identify the inventor or joint inventorexeuting the oath or declaration by hisor her legal name; (2) identify theapplication to which it is directed; (3)include a statement that the personexecuting the oath or declarationbelieves the named inventor or jointinventor to be the original inventor oran original joint inventor of a claimedVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00014 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6invention in the application for whichthe oath or declaration is beingsubmitted; and (4) state that theapplication was made or was authorizedto be made by the person executing theoath or declaration. The requirementsthat an oath or declaration include astatement that the person executing theoath or declaration believes the namedinventor or joint inventor to be theoriginal inventor or an original jointinventor of a claimed invention in theapplication for which the oath ordeclaration is being submitted, and statethat the application was made or wasauthorized to be made by the personexecuting the oath or declaration arerequirements of 35 U.S.C. 115(a) and (b).The requirements that an oath ordeclaration must identify the inventoror joint inventor executing the oath ordeclaration by his or her legal name andidentify the application to which it isdirected are necessary for the Office toensure that there is compliance with therequirement of 35 U.S.C. 115(a) thateach individual who is the inventor ora joint inventor of a claimed inventionin an application for patent hasexecuted an oath or declaration inconnection with the application (exceptas provided in 35 U.S.C. 115).Section 1.63(a)(1) simplifies therequirement for the inventor’s name tobe his or her legal name withoutreference to a family or given name. Therequirement for the inventor’s legalname is sufficient, given thatindividuals do not always have both afamily name and a given name, or havevarying understandings of what a‘‘given’’ name requires.Section 1.63(a)(2) contains thelanguage of former § 1.63(b)(1)(requiring identification of theapplication to which the oath ordeclaration is directed).Section 1.63(a)(3) no longer includesa requirement for identifying thecountry of citizenship for each inventor,as this information is no longer requiredby 35 U.S.C. 115.Section 1.63(a)(4) no longer includesthe requirement that the personexecuting the oath or declaration statethat he or she is believed to be the‘‘first’’ inventor, as this statement is nolonger provided for by 35 U.S.C115(b)(2) and would not be consistentwith a first inventor to file system.Section 1.63(a)(4) does include arequirement from 35 U.S.C. 115(b)(1),not present in former 35 U.S.C. 115 or§ 1.63, that the oath or declaration statethat the application was made or wasauthorized to be made by the personexecuting the oath or declaration.Section 1.63(b) provides that unlesssuch information is supplied in an