UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48793sroberts on DSK5SPTVN1PROD with RULESSections 1.78(a)(5)(iii) is amended toprovide that the reference requirementfor a benefit claim to a prior-filedprovisional application by anonprovisional application must be inthe application data sheet.Providing this information in theapplication data sheet constitutes thespecific reference required by 35 U.S.C.119(e) or 120. The patent statuterequires that a claim to the benefit of(specific reference to) a provisionalapplication (35 U.S.C. 119(e)(1)) ornonprovisional application (35 U.S.C.120) be in the application. Since theapplication data sheet (if provided) isconsidered part of the application, thespecific reference to an earlier filedprovisional or nonprovisionalapplication in the application data sheetmeets the ‘‘specific reference’’requirement of 35 U.S.C. 119(e)(1) or120.Providing this information in a singlelocation will also facilitate moreefficient processing of applications, asthe Office will only have to look at onelocation for the benefit claim and themost recent application data sheet willgovern. Formerly, the Office had to lookat the specification, amendments to thespecification and the application datasheet if provided to determine thebenefit claim. When applicantsprovided inconsistent informationamong the three sources, the Office hadto then determine which benefit claimgoverns in accordance with the rule.Providing this information in a singlelocation will facilitate review of patentsand patent application publications,because applications frequently providea benefit and/or foreign priority claim inthe first sentence(s) of the specification,which is amended 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 theapplication. Since most applications arefiled with an application data sheet,requiring benefit and/or foreign priorityclaims be included in the applicationdata sheet will not require mostpractitioners to change their practice.Section 1.78(a)(5)(iv) is amended todelete the reference to ‘‘an amendment’’and to delete the word ‘‘Supplemental.’’Section 1.78(a)(5)(iv) is also amended tochange thre phrase ‘‘withdrawing thebenefit claim’’ to ‘‘eliminating thereference under this paragraph to theprior-filed provisional application.’’Section 1.78(c) is amended to change‘‘assignee’’ to ‘‘applicant.’’ This changeis for consistency with the change inpractice concerning who is theapplicant for patent in § 1.42.Section 1.81: Section 1.81(a) isamended to change ‘‘his or herinvention’’ to ‘‘the invention.’’ Thischange is for consistency with thechange in practice concerning who isthe applicant for patent in § 1.42.Section 1.105: Section § 1.105 isamended to remove § 1.105(a)(2) (andredesignate §§ 1.105(a)(3) and (a)(4) as§§ 1.105(a)(2) and (a)(3), respectively) asan assignee that has asserted its right toprosecute the application is theapplicant. See § 1.46.Section 1.131: Section 1.131(a) isamended to change ‘‘the inventor of thesubject matter of the rejected claim, theowner of the patent underreexamination, or the party qualifiedunder §§ 1.42, 1.43, or 1.47’’ to ‘‘theapplicant or patent owner.’’ This changeis for consistency with the change inpractice concerning who is theapplicant for patent in § 1.42.Section 1.136: Section 1.136(c)(1) isamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.153: Section 1.153(b) isamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.154: Section 1.154(a)(6) isamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.162: Section 1.162 isamended to state that the inventornamed for a plant patent applicationmust be the person who has invented ordiscovered and asexually reproducedthe new and distinct variety of plant forwhich a patent is sought. This changefrom ‘‘applicant’’ to ‘‘inventor’’ is forconsistency with the change in practiceconcerning who is the applicant forpatent in § 1.42. Section 1.162 is alsoamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.163: Section 1.163(b)(6) isamended to refer to ‘‘the inventor’s oathor declaration.’’ See previous discussionof § 1.16(f).Section 1.172: Section 1.172(a) isrevised to state that the reissueapplicant is the original patentee, or thecurrent patent owner if there has beenan assignment. Section 1.172(a) requiresVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00019 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6that a reissue application beaccompanied by the written consent ofall assignees, if any, currently owningan undivided interest in the patent, andthat all assignees consenting to thereissue must establish their ownershipin the patent by filing in the reissueapplication a submission in accordancewith the provisions of § 3.73(c). Section1.172(b) provides that a reissue will begranted to the original patentee, hislegal representatives or assigns as theinterest may appear.Section 1.175: Section 1.175(a)provides that the inventor’s oath ordeclaration for a reissue application, inaddition to complying with therequirements of § 1.63, § 1.64, or§ 1.67,must also specifically identify at leastone error pursuant to 35 U.S.C. 251being relied upon as the basis for reissueand state that the applicant believes theoriginal patent to be wholly or partlyinoperative or invalid by reason of adefective specification or drawing, or byreason of the patentee claiming more orless than the patentee had the right toclaim in the patent. Examples of propererror statements are discussed in MPEP§ 1414, II. The reissue oath ordeclaration may identify more than onespecific error that forms the basis of thereissue, but at least one error must beidentified.Section 1.175(b) provides that if thereissue application seeks to enlarge thescope of the claims of the patent (a basisfor the reissue is the patentee claimingless than the patentee had the right toclaim in the patent), the inventor’s oathor declaration for a reissue applicationmust identify a claim that theapplication seeks to broaden.Section 1.175(b) indicates that a claimis a broadened claim if the claim isbroadened in any respect for purposesof 35 U.S.C. 251. See Tillotson, Ltd. v.Walbro Corp., 831 F.2d 1033, 1037 n.2(Fed. Cir. 1987), In re Ruth, 278 F.2d729, 730 (CCPA 1960), and In re Rogoff,261 F.2d 601, 603 (CCPA 1958). Therequirement that a claim broadened inany respect be treated as a broadenedclaim is important to determine whocan sign the reissue oath or declaration.It also is important because a reissueapplication that broadens the scope ofthe original patent may only be filedwithin two years from the grant of theoriginal patent. See 35 U.S.C. 251(d).Section 1.175(c) provides that theinventor, or each individual who is ajoint inventor of a claimed invention, ina reissue application must execute anoath or declaration for the reissueapplication, except as provided for in§ 1.64, and except that the inventor’soath or declaration for a reissueapplication may be signed by the