UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48789sroberts on DSK5SPTVN1PROD with RULESapplication data sheet in accordancewith § 1.76, the oath or declaration mustalso identify: (1) each inventor by his orher legal name; and (2) a mailingaddress where the inventor customarilyreceives mail, and (3) residence, if aninventor lives at a location which isdifferent from where the inventorcustomarily receives mail, for eachinventor. Therefore, the applicant is notrequired to name each inventor in asingle oath or declaration as long as theinventorship is provided in anapplication data sheet in accordancewith § 1.76. This will permit each jointinventor to execute an oath ordeclaration stating only that the jointinventor executing the oath ordeclaration is an original joint inventorof the claimed invention in theapplication for which the oath ordeclaration is being submitted. Thephrase ‘‘application data sheet inaccordance with § 1.76’’ requires thatthe application data sheet be signed incompliance with § 1.33(b). An unsignedapplication data sheet will be treatedonly as a transmittal letter.The requirement for identification ofa mailing address is clarified by notingthat it is the address where the inventor‘‘customarily receives mail,’’ which mayencompass an address where theinventor works, a post office box, orother address where mail is receivedeven if it is not the main mailingaddress of the inventor. The mailingaddress is for the benefit of the inventorin the event that the Office would needto contact the inventor directly.Section 1.63 is also amended toeliminate the requirement foridentifying the claim for foreign priorityunder § 1.55 in the oath or declaration.This change reflects the Office’s desireto have claims for foreign priority under§ 1.55 and claims for domestic benefitunder § 1.78 be presented in anapplication data sheet (§ 1.76). Theformer requirement that the domesticclaim for benefit be placed in the firstsentence(s) of the specification or anapplication data sheet (§ 1.76), whilerequiring that a foreign priority claim beidentified in an oath or declaration orapplication data sheet, has led toconfusion by applicants as to the properplacement of these priority or benefitclaims and to Office processing issues ofsuch claims. As section 3 of the AIAplaced foreign priority claims on equalfooting with domestic benefit claims inregard to what may be relied upon as aprior art date, it is important that therebe one unified place that the Office andthe public rely upon in determiningthese claims. Accordingly, §§ 1.55 and1.78 are amended to provide a unifiedway (the application data sheet) topresent the claims that will lead to amore reliable placement of the claims ina printed patent or a patent applicationpublication.Section 1.63(c) provides that a personmay not execute an oath or declarationfor an application unless that person hasreviewed and understands the contentsof the application, including the claims,and is aware of the duty to disclose tothe Office all information known to theperson to be material to patentability asdefined in § 1.56. Thus, an oath ordeclaration under § 1.63 is no longerrequired to contain the ‘‘reviewed andunderstands’’ clause and ‘‘duty todisclose’’ clause of former § 1.63(b)(2)and (b)(3). However, § 1.63 still requiresthat a person executing an oath ordeclaration for an application reviewand understand the contents of theapplication, and be aware of the duty ofdisclosure under § 1.56. Section 1.63(c)also provides that there is no minimumage for a person to be qualified toexecute an oath or declaration, but theperson must be competent to execute,i.e., understand, the document that theperson is executing. This provisioncontains the language of former§ 1.63(a)(1).Section 1.63(d) implements theprovisions of 35 U.S.C. 115(g). Section1.63(d)(1) provides that a newlyexecuted oath or declaration under§ 1.63, or substitute statement under§ 1.64, is not required under § 1.51(b)(2)and § 1.53(f) or § 1.497 for an inventorin a continuing application that claimsthe benefit under 35 U.S.C. 120, 121, or365(c) in compliance with § 1.78 of anearlier-filed application, provided thatan oath or declaration in compliancewith § 1.63, or substitute statementunder § 1.64, was executed by or withrespect to such inventor and was filedin the earlier-filed application, and acopy of such oath, declaration, orsubstitute statement showing thesignature or an indication thereon thatit was executed, is submitted in thecontinuing application. Section1.63(d)(2) provides that the inventorshipof a continuing application filed under35 U.S.C. 111(a) is the inventor or jointinventors specified in the applicationdata sheet filed before or concurrentlywith the copy of the inventor’s oath ordeclaration from the earlier-filedapplication. If an application data sheetis not filed before or concurrently withthe copy of the inventor’s oath ordeclaration from the earlier-filedapplication, the inventorship is theinventorship set forth in the copy of theinventor’s oath or declaration from theearlier-filed application, unless the copyof the inventor’s oath or declaration isaccompanied by a statement signedVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00015 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6pursuant to § 1.33(b) stating the name ofeach inventor in the continuingapplication. Section 1.63(d)(3) providesthat any new joint inventor named inthe continuing application must providean oath or declaration in compliancewith § 1.63, except as provided for in§ 1.64.Section 1.63(e) implements theprovisions of 35 U.S.C. 115(e). Section1.63(e)(1) provides that an assignmentmay also serve as an oath or declarationrequired by § 1.63 if the assignment: (1)includes the information and statementsrequired under § 1.63(a) and (b); and (2)a copy of the assignment is recorded asprovided for in 37 CFR part 3. Theassignment, including the informationand statements required under § 1.63(a)and (b), must be executed by theindividual who is under the obligationof assignment. Section 1.63(e)(2)provides that any reference to an oath ordeclaration under § 1.63 includes anassignment as provided for in § 1.63(e).Applicants should be mindful of thechange to § 3.31 requiring a conspicuousindication, such as by use of a checkboxon the assignment cover sheet, toalert the Office that an assignmentsubmitted with an application issubmitted for a dual purpose: recordingin the assignment database, such as tosupport a power of attorney, and for usein the application as the oath ordeclaration. Assignments cannot berecorded unless an application numberis provided against which theassignment is to be recorded. When anassignment is submitted for recordingalong with a paper application, theassignment is separated from the paperapplication and forwarded to theAssignment Recordation Branch forrecording in its database at the timewhere the application is assigned anapplication number. The assignmentdoes not become part of the applicationfile. If the applicant indicates that anassignment-statement is also an oath ordeclaration, the Office will scan theassignment into the Image File Wrapper(IFW) file for the application beforeforwarding it to the AssignmentRecordation Branch. Failure to utilizethe check-box will result in a Notice toFile Missing Parts of NonprovisionalApplication requiring an inventor’s oathor declaration as the assignment will notbe made part of the application file norwill the Office recognize that the § 1.63oath or declaration requirement hasbeen satisfied. A copy of the assignmentwould need to be submitted in reply tothe Notice along with the surcharge forthe late submission of the inventor’soath or declaration.For EFS–Web filing of applicationpapers, EFS–Web does not accept