UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

sroberts on DSK5SPTVN1PROD with RULES48792 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and RegulationsSection 1.76(b)(5) is amended toprovide that domestic benefitinformation includes the applicationnumber, the filing date, the status(including patent number if available),and relationship of each application forwhich a benefit is claimed under 35U.S.C. 119(e), 120, 121, or 365(c).Section 1.76(b)(5) further provides thatproviding this information in theapplication data sheet constitutes thespecific reference required by 35 U.S.C.119(e) or 120, and § 1.78(a)(2) or§ 1.78(a)(5).Section 1.76(b)(7) is amended topertain to ‘‘applicant’’ rather than‘‘assignee’’ information. Section1.76(b)(7) provides that applicantinformation includes the name (eithernatural person or juristic entity) andaddress of the legal representative,assignee, person to whom the inventoris under an obligation to assign theinvention, or person who otherwiseshows sufficient proprietary interest inthe matter who is the applicant under§ 1.43 or 1.46. Thus, § 1.76(b)(7)provides for the situation in which theapplicant is a person other than theinventor under § 1.43 (legalrepresentative) or § 1.46 (assignee,person to whom the inventor is underan obligation to assign the invention, orperson who otherwise shows sufficientproprietary interest in the matter). Thissection may be left blank if theapplicant is the inventor or is theremaining joint inventor or inventors(§ 1.45).As discussed previously, § 1.46(b)provides that if an application is filedby the assignee, a person to whom theinventor is under an obligation to assignthe invention, or a person whootherwise shows sufficient proprietaryinterest in the matter, the applicationmust contain an application data sheetunder § 1.76 specifying the assignee,person to whom the inventor is underan obligation to assign the invention, orperson who otherwise shows sufficientproprietary interest in the matter in theapplicant information section. As alsodiscussed previously, § 1.46(c) providesthat any request to correct or update thename of the applicant, or change theapplicant, must include an applicationdata sheet under § 1.76 specifying theapplicant in the applicant informationsection. Section 1.76(b)(7) continues toprovide that providing assignmentinformation in the application datasheet does not substitute for compliancewith any requirement of 37 CFR part 3to have an assignment recorded by theOffice.Section 1.76(c) is amended toeliminate the distinction between anapplication data sheet and asupplemental application data sheet. Anapplication data sheet provided onfiling and an application data sheetsubmitted after the filing date of theapplication are both considered anapplication data sheet.Section 1.76(c)(1) provides thatinformation in a previously submittedapplication data sheet, the inventor’soath or declaration under § 1.63, § 1.64,or § 1.67, or otherwise of record, may becorrected or updated until payment ofthe issue fee by a new application datasheet providing corrected or updatedinformation, except that inventorshipchanges must comply with therequirements of § 1.48, foreign priorityand domestic benefit informationchanges must comply with §§ 1.55 and1.78, and correspondence addresschanges must comply with § 1.33(a).Section 1.76(c)(2) provides that anapplication data sheet providingcorrected or updated information mayinclude all of the sections listed in§ 1.76(b) or only those sectionscontaining changed or updatedinformation. Section 1.76(c)(2) furtherprovides that the application data sheetmust include the section headings listedin § 1.76(b) for each section included inthe application data sheet, and mustidentify the information that is beingchanged, with underlining forinsertions, and strike-through orbrackets for text removed, except thatidentification of information beingchanged is not required for anapplication data sheet included with aninitial submission under 35 U.S.C. 371.Section 1.76(d) governs the situationin which there are inconsistenciesbetween the application data sheet andother documents.Section 1.76(d)(1) provides that themost recent submission will govern(control) with respect to inconsistenciesas between the information provided inan application data sheet, a designationof a correspondence address, or by theinventor’s oath or declaration, exceptthat: (1) the most recent application datasheet will govern with respect to foreignpriority (§ 1.55) or domestic benefit(§ 1.78) claims; and (2) the naming ofthe inventorship is governed by § 1.41and changes to inventorship or thenames of the inventors is governed by§ 1.48. Section 1.76(d)(1) no longerreferences ‘‘an amendment to thespecification’’ as governing with respectto inconsistencies in view of thechanges to § 1.78.Section 1.76(d)(2) provides that theinformation in the application datasheet will govern when the inconsistentinformation is supplied at the same timeby a designation of correspondenceVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00018 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6address or the inventor’s oath ordeclaration.Section 1.76(d)(3) provides that theOffice will capture bibliographicinformation from the application datasheet. Section 1.76(d)(3) furtherprovides that the Office will generallynot review the inventor’s oath ordeclaration to determine if thebibliographic information containedtherein is consistent with thebibliographic information provided inan application data sheet. Section1.76(d)(3) further provides that incorrectbibliographic information contained inan application data sheet may becorrected as provided in § 1.76(c)(1).Section 1.76(e) provides that anapplication data sheet must be signed incompliance with § 1.33(b). Section1.76(e) further provides that anunsigned application data sheet will betreated only as a transmittal letter. Thus,an unsigned application data sheet willnot be effective to provide the name ofthe inventor for any invention claimedin the application (§ 1.41(b)), to make aclaim to priority of a foreign application(§§ 1.55(a)(1)(i), (c) and (d)(1)(ii)), ormake a claim to the benefit of a priorfileddomestic application(§§ 1.78(a)(2)(iii) and (a)(5)(iii)).The Office published a notice inMarch of 2008 indicating that therequirement under § 1.14(h)(2) that thewritten authority must be submitted ona separate document is waived in theevent the applicant files a properlyexecuted oath or declaration (e.g., themodified Form PTO/SB/01) with theAuthorization to Permit Access toApplication by Participating Offices.See Enhancement of Priority DocumentExchange Program and USPTODeclaration Form, 1328 Off. Gaz. Pat.Office 90, 91 (Mar. 11, 2008). In view ofthe changes to §§ 1.63 and 1.76 in thisfinal rule, the Office is now providingthat the requirement under § 1.14(h)(2)that the written authority must besubmitted on a separate document is notapplicable if the applicant files aproperly executed application datasheet (e.g., the modified Form PTO/SB/14) with the Authorization to PermitAccess to Application by ParticipatingOfficesSection 1.77: Section 1.77(a)(6) isamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.78: Section 1.78(a)(2)(iii) isamended to provide that the reference tothe prior-filed application that isrequired for benefit claim to a prior-filednonprovisional application orinternational application designatingthe U.S. by a nonprovisional applicationmust be in the application data sheet.