UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

sroberts on DSK5SPTVN1PROD with RULES48790 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationsassignments for recording purposeswhen filing an application. See LegalFramework for Electronic FilingSystem—Web (EFS–Web), 74 FR 55200,55202 (Oct. 27, 2009). Recording ofassignments may only be doneelectronically in EPAS (ElectronicPatent Assignment System),notwithstanding the existence of a linkfrom EFS–Web to EPAS that can beutilized to file an assignment after theapplication is filed. Accordingly, forEFS–Web submissions, all assignmentssubmitted on filing of the application orlater submitted will be made of recordin the application (entered into theImage File Wrapper (IFW)), and will notbe forwarded to the AssignmentRecordation Branch for recordation bythe Office. Thus, an assignment must besubmitted to the AssignmentRecordation Branch in order to complywith § 1.63(e)(1)(ii). If an applicant filesthe assignment-statement for recordingvia EPAS and utilizes the check-box, theOffice will place a copy of theassignment-statement in the relatedapplication file.Section 1.63(f) provides that withrespect to an application naming onlyone inventor, any reference to theinventor’s oath or declaration in 37 CFRchapter I also includes a substitutestatement executed under § 1.64. Thus,any requirement in 37 CFR chapter I forthe inventor’s oath or declaration withrespect to an application naming onlyone inventor is met if an oath ordeclaration under § 1.63, an assignmentstatementunder § 1.63(e), or a substitutestatement under § 1.64 executed by orwith respect to the inventor is filed.Section 1.63(f) also provides that withrespect to an application naming morethan one inventor, any reference to theinventor’s oath or declaration in 37 CFRchapter I means the oaths, declarations,or substitute statements that have beencollectively executed by or with respectto all of the joint inventors, unlessotherwise clear from the context. Thus,any requirement in 37 CFR chapter I forthe inventor’s oath or declaration withrespect to an application naming morethan one inventor is met if an oath ordeclaration under § 1.63, an assignmentstatementunder § 1.63(e), or a substitutestatement under § 1.64 executed by orwith respect to each joint inventor isfiled.Section 1.63(g) provides that an oathor declaration under § 1.63, includingthe statement provided for in § 1.63(e),must be executed (i.e., signed) inaccordance either with § 1.66, or withan acknowledgment that any willfulfalse statement made in suchdeclaration or statement is punishableunder 18 U.S.C. 1001 by fine orimprisonment of not more than five (5)years, or both. See 35 U.S.C. 115(i). Theinventor’s oath or declaration must beexecuted (i.e., signed) by the inventor orthe joint inventors, unless the oath ordeclaration is a substitute statementunder § 1.64, which must be signed bythe party or parties making thestatement, or an assignment under§ 1.63(e), which must be signed by theindividual who is under the obligationof assignment of the patent application.35 U.S.C. 115(h)(1) provides that anyperson making a statement under thissection may at any time ‘‘withdraw,replace, or otherwise correct thestatement at any time.’’ Section 1.63(h)provides that an oath or declarationfiled at any time pursuant to 35 U.S.C.115(h)(1) will be placed in the filerecord of the application or patent, butmay not necessarily be reviewed by theOffice. Oaths or declarations submittedpursuant to 35 U.S.C. 115(h)(1) that arefiled prior to the mailing of a notice ofallowance in an application wouldcontinue to be reviewed by the Officefor compliance with 35 U.S.C. 115 andthe applicable regulations. Oaths ordeclarations submitted pursuant to 35U.S.C. 115(h)(1) that are filed after themailing of a notice of allowance in anapplication or patent would generallynot be reviewed by the Office. Section1.63(h) further provides that any requestfor correction of the named inventorshipmust comply with § 1.48 in anapplication and § 1.324 in a patent. Thisis a reminder that the mere submissionof an oath or declaration pursuant to 35U.S.C. 115(h)(1) will not operate tocorrect inventorship in compliance with§ 1.48 in an application and § 1.324 ina patent.The provisions in former § 1.63concerning the power of attorney in acontinuing application are nowcontained in § 1.32 and thecorrespondence address in a continuingapplication are now contained in§ 1.33(f).Section 1.64: Section 1.64 implementsthe substitute statement provisions of 35U.S.C. 115(d). The provisions of former§ 1.64 concerning who must execute anoath or declaration are now contained in§ 1.63 with respect to an oath,declaration, or assignment-statementunder § 1.63 and are now containedwithin § 1.64 with respect to who mayexecute a substitute statement.Section 1.64(a) provides that anapplicant under § 1.43, 1.45 or 1.46 mayexecute a substitute statement in lieu ofan oath or declaration under § 1.63 if theinventor is deceased, is under a legalincapacity, has refused to execute theoath or declaration under § 1.63, orcannot be found or reached afterVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00016 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6diligent effort. 35 U.S.C. 115(d) providesthat, in lieu of execution of an oath ordeclaration by an inventor, theapplicant for patent may provide asubstitute statement under thecircumstances described in 35 U.S.C.115(d)(2) and such additionalcircumstances as the Director specifiesby regulation. See 35 U.S.C. 115(d)(1).The circumstances set forth in 35 U.S.C.115(d)(2) in which the applicant mayprovide a substitute statement are thesituations where the inventor isdeceased, under legal incapacity, orcannot be found or reached afterdiligent effort, or is under an obligationto assign the invention but has refusedto execute the oath or declaration. See35 U.S.C. 115(d)(2).As discussed previously, 35 U.S.C.115(d)(1) provides that the applicant forpatent may provide a substitutestatement in lieu of execution of an oathor declaration by an inventor under 35U.S.C. 115(a) under such additionalcircumstances as the Director specifiesby regulation. The Office is permittingthe applicant to provide a substitutestatement in lieu of an oath ordeclaration whenever the inventor hasrefused to execute the oath ordeclaration, even if the inventor is notunder an obligation to assign theinvention. 35 U.S.C. 118 and § 1.46, asadopted in this final rule, provide thata person who otherwise showssufficient proprietary interest in thematter may make an application forpatent on behalf of and as agent for theinventor on proof of the pertinent factsand a showing that such action isappropriate to preserve the rights of theparties. Thus, § 1.64, as adopted in thisfinal rule, permits a person whootherwise shows sufficient proprietaryinterest in the matter to execute asubstitute statement in lieu of executionof an oath or declaration by the inventoror a joint inventor if the inventor or ajoint refuses to join in an application forpatent regardless of whether there is anobligation to assign. 35 U.S.C. 116(b)and § 1.45, as adopted in this final rule,provide that if a joint inventor refusesto join in an application for patent orcannot be found or reached afterdiligent effort, the application may bemade by the other inventor on behalf ofhimself and the omitted inventor. See35 U.S.C. 116(b). Thus, § 1.64, asadopted in this final rule, permitsanother joint inventor to execute asubstitute statement in lieu of executionof an oath or declaration by the omittedinventor if a joint inventor refuses tojoin in an application for patentregardless of whether there is anobligation to assign the invention. If the