UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

sroberts on DSK5SPTVN1PROD with RULES48794 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationsassignee of the entire interest if: (1) Theapplication does not seek to enlarge thescope of the claims of the originalpatent; or (2) the application for theoriginal patent was filed under § 1.46 bythe assignee of the entire interest. See 35U.S.C. 251(c).Section 1.175(d) provides that whereall errors previously identified in theinventor’s oath or declaration for areissue application pursuant to§ 1.175(a) are no longer being reliedupon as the basis for reissue, theapplicant must identify an error beingrelied upon as the basis for reissue.Thus, a supplemental reissue oath ordeclaration is no longer required whereall errors previously identified in theinventor’s oath or declaration for areissue application pursuant to§ 1.175(a) are no longer being reliedupon as the basis for reissue. However,the applicant must still identify an errorbeing relied upon as the basis for reissue(e.g., in the remarks of an amendment).A new reissue oath or declaration wouldbe still required if the reissue oath ordeclaration pursuant to § 1.175(a) failsto identify any error or fails to identifyat least one error of the type that wouldsupport a reissue. See MPEP § 1402.Section 1.175 does not contain arequirement for supplemental reissueoaths or declarations in view of thechange to 35 U.S.C. 251 in section 20 ofthe AIA (i.e., removal of the ‘‘withoutany deceptive intention’’ provision insection 20 of the AIA).Section 1.175(e) provides that theinventor’s oath or declaration for areissue application required by§ 1.175(a) may be submitted under theprovisions of § 1.53(f), except that theprovisions of § 1.53(f)(3) do not apply toa reissue application. Thus, theinventor’s oath or declaration for areissue application must be presentbefore a reissue application will beexamined.Section 1.175(f) provides that therequirement for the inventor’s oath ordeclaration for a continuing reissueapplication that claims the benefitunder 35 U.S.C. 120, 121, or 365(c) incompliance with § 1.78 of an earlierfiledreissue application may besatisfied by a copy of the inventor’s oathor declaration from the earlier-filedreissue application, provided that: (1)The inventor, or each individual who isa joint inventor of a claimed invention,in the reissue application executed aninventor’s oath or declaration for theearlier-filed reissue application, exceptas provided for in § 1.64; (2) thecontinuing reissue application does notseek to enlarge the scope of the claimsof the original patent; or (3) theapplication for the original patent wasfiled under § 1.46 by the assignee of theentire interest. Thus, the requirementfor the inventor’s oath or declaration fora continuing reissue application may besatisfied by a copy of the inventor’s oathor declaration from the earlier-filedreissue application except when all ofthe following conditions exist: (1) Theinventor’s oath or declaration for theearlier-filed reissue application wasexecuted by the patent owner and notby or with respect to the inventor, (2)the continuing reissue application seeksto enlarge the scope of the claims of theoriginal patent; and (3) the applicationfor the original patent was not filedunder § 1.46 by the assignee of theentire interest. Section 1.175(f) furtherprovides that if all errors identified inthe inventor’s oath or declaration fromthe earlier-filed reissue application areno longer being relied upon as the basisfor reissue, the applicant must identifyan error being relied upon as the basisfor reissue.Section 1.175(g) provides that an oathor declaration filed at any time pursuantto 35 U.S.C. 115(h)(1), will be placed inthe file record of the reissue application,but may not necessarily be reviewed bythe Office.Section 1.211: Section 1.211(c) isamended to no longer require ‘‘anexecuted oath or declaration’’ forpublication of the application. Section1.211(c) is also amended to state that theOffice may delay publishing anyapplication until it includes ‘‘theinventor’s oath or declaration orapplication data sheet containing theinformation specified in § 1.63(b)’’ andto no longer reference a petition under§ 1.47. These changes are due to thechange to §§ 1.53 and 1.495 to allowapplicants to postpone filing theinventor’s oath or declaration until theapplication is otherwise in condition forallowance.Section 1.215: Section 1.215(a) isamended to replace ‘‘executed oath ordeclaration’’ with ‘‘application datasheet and/or the inventor’s oath ordeclaration.’’ This change is due to thechange to §§ 1.53 and 1.495 to allowapplicants to postpone filing theinventor’s oath or declaration until theapplication is otherwise in condition forallowance.Section 1.215(b) is amended to statethat the patent application publicationwill include the name of the assignee,person to whom the inventor is underan obligation to assign the invention, orperson who otherwise shows sufficientproprietary interest in the matter if thatinformation is provided in theapplication data sheet in an applicationfiled under § 1.46.VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00020 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6Section 1.215(c) is amended toreplace ‘‘oath or declaration’’ with‘‘application data sheet and/or theinventor’s oath or declaration.’’ Thischange is due to the change to §§ 1.53and 1.495 to allow applicants topostpone filing the inventor’s oath ordeclaration until the application isotherwise in condition for allowance.Section 1.321: Section 1.321(b) isamended to provide that a terminaldisclaimer must be signed by theapplicant or an attorney or agent ofrecord and state the present extent ofapplicant’s ownership interest in thepatent to be granted.Section 1.324: Section 1.324 isamended to no longer include a‘‘without deceptive intention’’requirement (as this requirement hasbeen eliminated from 35 U.S.C. 256 insection 20 of the AIA). Section 1.324(a)provides that whenever through error aperson is named in an issued patent asthe inventor, or an inventor is notnamed in an issued patent, the Director,pursuant to 35 U.S.C. 256, may, onapplication of all the parties andassignees, or on order of a court beforewhich such matter is called in question,issue a certificate naming only theactual inventor or inventors. See 35U.S.C. 256.Section 1.324(b) provides that anyrequest to correct inventorship of apatent pursuant to 1.324(a) must beaccompanied by: (1) A statement fromeach person who is being added as aninventor and each person who iscurrently named as an inventor eitheragreeing to the change of inventorshipor stating that he or she has nodisagreement in regard to the requestedchange; (2) a statement from allassignees of the parties submitting astatement under 1.324(b)(1) agreeing tothe change of inventorship in the patent,which statement must comply with therequirements of § 3.73(c); and (3) the feeset forth in § 1.20(b).Section 1.324(c) provides a crossreference to § 1.48 for correction ofinventorship in an application.Section 1.324(d) provides that in aninterference under part 41, subpart D, ofthis title, a request for correction ofinventorship in a patent must be in theform of a motion under § 41.121(a)(2) ofthis title, and that in a contested caseunder part 42, subpart D, of this title, arequest for correction of inventorship ina patent must be in the form of a motionunder § 42.22 of this title. Section1.324(d) further provides that themotion under § 41.121(a)(2) or 42.22 ofthis title must comply with therequirements of § 1.324.Section 1.414: Section 1.414(c)(2) isamended to replace ‘‘[a]ccepting for