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Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48791sroberts on DSK5SPTVN1PROD with RULESOffice does not permit the applicant toalso provide a substitute statement inlieu of an oath or declaration wheneverthe inventor or a joint inventor hasrefused to execute the oath ordeclaration (even if the inventor or jointinventor is not under an obligation toassign the invention), a person whootherwise shows sufficient proprietaryinterest in the matter who provides ashowing that such action is appropriateto preserve the rights of the parties, orthe remaining inventor or inventors,may be the applicant under either 35U.S.C. 118 or 116(b), respectively, butmay be precluded from providing asubstitute statement in lieu of an oath ordeclaration. This is consistent withexisting Office practice under which aperson who otherwise shows sufficientproprietary interest in the matter or theremaining inventor or inventors mayexecute the oath or declaration as theapplicant if all of the inventors haverefused to execute the oath ordeclaration.Section 1.64(b) provides that asubstitute statement under § 1.64 must:(1) comply with the requirements of§ 1.63(a), identifying the inventor orjoint inventor with respect to whom asubstitute statement in lieu of an oath ordeclaration is executed, and statingupon information and belief the factswhich such inventor is required to state;(2) identify the person executing thesubstitute statement and therelationship of such person to theinventor or joint inventor with respectto whom the substitute statement isexecuted, and unless such informationis supplied in an application data sheetin accordance with § 1.76, the residenceand mailing address of the personsigning the substitute statement; and (3)identify the circumstances permittingthe person to execute the substitutestatement in lieu of an oath ordeclaration under § 1.63, namelywhether the inventor is deceased, isunder a legal incapacity, cannot befound or reached after a diligent effortwas made, or has refused to execute theoath or declaration under § 1.63. Section1.64(b) also provides that, unless suchinformation is supplied in anapplication data sheet in accordancewith § 1.76, the substitute statementmust also identify: (1) each inventor byhis or her legal name; and (2) the lastknown mailing address where theinventor customarily receives mail, andlast known residence, if an inventorlives at a location which is differentfrom where the inventor customarilyreceives mail, for each inventor who isnot deceased or under a legalincapacity.Section 1.64(c) provides that a personmay not execute a substitute statementunder § 1.64 for an application unlessthat person has reviewed andunderstands the contents of theapplication, including the claims, and isaware of the duty to disclose to theOffice all information known to theperson to be material to patentability asdefined in § 1.56.Section 1.64(d) provides that anyreference to an inventor’s oath ordeclaration also includes a substitutestatement provided for in § 1.64.Section 1.64(e) provides that asubstitute statement under § 1.64 mustcontain an acknowledgment that anywillful false statement made in suchstatement is punishable under 18 U.S.C.1001 by fine or imprisonment of notmore than five (5) years, or both.Section 1.64(f) provides that anonsigning inventor or legalrepresentative may subsequently join inthe application by submitting an oath ordeclaration under § 1.63. Section 1.64(f)also provides that the submission of anoath or declaration by a nonsigninginventor or legal representative in anapplication filed under § 1.43, 1.45 or1.46 will not permit the nonsigninginventor or legal representative torevoke or grant a power of attorney.Section 1.66: Section 1.66 is amendedto eliminate the special provisions foroaths taken before an officer in acountry other than the United States.Section 1.67: Section 1.67 providesfor a supplemental inventor’s oath ordeclaration (which includes oaths,declarations, assignment-statementsunder § 1.63(e), and substitutestatements under § 1.64) under 35U.S.C. 115(h).Section 1.67(a) provides that theapplicant may submit an inventor’s oathor declaration meeting the requirementsof § 1.63, § 1.64, or § 1.162 to correct anydeficiencies or inaccuracies present inan earlier-filed inventor’s oath ordeclaration. See 35 U.S.C. 115(h)(1).Section 1.67(a) also provides thatdeficiencies or inaccuracies due to thefailure to meet the requirements of§ 1.63(b) in an oath or declaration maybe corrected with an application datasheet in accordance with § 1.76, exceptthat any correction of inventorship mustbe pursuant to § 1.48.Section 1.67(b) provides that asupplemental inventor’s oath ordeclaration under § 1.67 must beexecuted by the person whoseinventor’s oath or declaration is beingwithdrawn, replaced, or otherwisecorrected.Section 1.67(c) provides that theOffice will not require a person who hasexecuted an oath or declaration inVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00017 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6compliance with 35 U.S.C. 115 and§ 1.63 or § 1.162 for an application toprovide an additional inventor’s oath ordeclaration for the application. See 35U.S.C. 115(h)(2).Section 1.67(d) contains the provisionof former § 1.67(b) that no new mattermay be introduced into anonprovisional application after itsfiling date even if an inventor’s oath ordeclaration is filed to correctdeficiencies or inaccuracies present inthe earlier-filed oath or declaration.Section 1.76: Section 1.76(a) isamended to clarify that an applicationdata sheet may be submitted in aprovisional application under 35 U.S.C.111(b), a nonprovisional applicationunder 35 U.S.C. 111(a), or a nationalstage application under 35 U.S.C. 371.Section 1.76(a) is also amended torequire that an application data sheetmust be submitted to claim priority toor the benefit of a prior-filed applicationunder 35 U.S.C. 119, 120, 121, or 365 forconsistency with the changes to §§ 1.55and 1.78. Including foreign priority anddomestic benefit claims in the Office’sApplication Data Sheet form (PTO/SB/14) can benefit applicants as the datacan be loaded directly into the Office’selectronic systems; thus ensuring thedata is accurately captured. The datawill only load directly into the Office’selectronic systems when the PTO/SB/14is submitted as an EFS–Web FillableForm, rather than a scanned portabledocument format (PDF) image submittedelectronically via EFS–Web. Section1.76(a) is also amended to provide thatthe provisions of § 1.76(c)(2) (discussedsubsequently) are an exception to therequirement that an application datasheet must contain all of the sectionheadings listed in § 1.76(b), with anyappropriate data for each sectionheading.Section 1.76(b)(1) is amended topertain to inventor information, ratherthan applicant information. Asdiscussed previously, the Office plans tocontinue to use the inventor’s name forapplication and patent identificationpurposes as inventor names tend toprovide a more distinct identificationthan assignee name. Section 1.76(b)(1)indicates that inventor informationincludes the legal name, residence, andmailing address of the inventor or eachjoint inventor.Section 1.76(b)(3) is amended toeliminate a suggested classification, byclass and subclass, and the TechnologyCenter, from the application informationportion of the application data sheet.This information is no longer utilized bythe Office in view of internal changesrelating to how applications areclassified.