UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

sroberts on DSK5SPTVN1PROD with RULES48796 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations1.495(c)(3) specifically provides that theinventor’s oath or declaration must alsobe filed within the period specified in§ 1.495(c)(2), except that the filing of theinventor’s oath or declaration may bepostponed until the application isotherwise in condition for allowanceunder the conditions specified in§§ 1.495(c)(3)(i) through (c)(3)(iii).Section 1.495(c)(3)(i) provides that theapplication must contain an applicationdata sheet in accordance with § 1.76filed prior to the expiration of the timeperiod set in any notice under§ 1.495(c)(1) identifying: (1) Eachinventor by his or her legal name; and(2) a mailing address where the inventorcustomarily receives mail, andresidence, if an inventor lives at alocation which is different from wherethe inventor customarily receives mail,for each inventor. Section 1.495(c)(3)(ii)provides that the applicant must file anoath or declaration in compliance with§ 1.63, or substitute statement incompliance with § 1.64, executed by orwith respect to each actual inventor nolater than the expiration of the timeperiod set in the ‘‘Notice ofAllowability’’ to avoid abandonment,when the applicant is notified in a‘‘Notice of Allowability’’ that anapplication is otherwise in condition forallowance. The time period set in a‘‘Notice of Allowability’’ is notextendable. See § 1.136(c). The Officemay dispense with the notice providedfor in § 1.495(c)(1) if an oath ordeclaration under § 1.63, or substitutestatement under § 1.64, executed by orwith respect to each actual inventor hasbeen filed before the application is incondition for allowance.Under former practice, the Officeissued a Notification of MissingRequirements if the basic national feeand copy of the internationalapplication (if required under§ 1.495(b)(1)) have been received by theexpiration of thirty months from thepriority date, but the inventor’s oath ordeclaration has not been filed. If theOffice issued a Notification of MissingRequirements, the applicant was given atime period (the later of two monthsfrom the date of the notice or thirty-twomonths from the priority date) withinwhich to file the inventor’s oath ordeclaration and pay the surchargerequired by § 1.492(h) to avoidabandonment. See MPEP § 1893.01(e).The Office is modifying this practicesuch that if a signed application datasheet providing the informationrequired by § 1.495(c)(3)(i) has beenreceived, but not the inventor’s oath ordeclaration, the Office will not issue aNotification of Missing Requirementsrequiring the applicant to file theinventor’s oath or declaration. Thischange will not affect the practice ofissuing a Notification of MissingRequirements if another requirement ismissing (e.g., an English translation ofthe international application requiredunder § 1.495(c) or the surchargerequired by § 1.492(h) for filing theinventor’s oath or declaration after thedate of commencement). If the basicnational fee and required copy of theinternational application have beenreceived by the expiration of thirtymonths from the priority date, butneither the inventor’s oath ordeclaration as required under § 1.497nor a signed application data sheetproviding the information required by§ 1.495(c)(3)(i) have been received, theOffice will issue a Notification ofMissing Requirements giving theapplicant a time period (at least twomonths) within which to file theinventor’s oath or declaration (or signedapplication data sheet providing theinformation required by § 1.495(c)(3)(i))and surcharge required by § 1.492(h)(unless previously paid) to avoidabandonment. In this situation, theinventor’s oath or declaration will notbe required within the period for replyto the Notification of MissingRequirements if the applicant providesa signed application data sheetproviding the information required by§ 1.495(c)(3)(i) within the period forreply to the Notification of MissingRequirements. The surcharge requiredby § 1.492(h), and any other itemrequired by the Notification, however,must be filed within the period for replyto the Notification of MissingRequirements to avoid abandonment.If an application is in condition forallowance and includes an oath ordeclaration in compliance with § 1.63,or substitute statement in compliancewith § 1.64, executed by or with respectto each actual inventor, the Office willissue a ‘‘Notice of Allowability’’ (PTOL–37) and a ‘‘Notice of Allowance andFee(s) Due’’ (PTOL–85). If anapplication is in condition forallowance but does not include an oathor declaration in compliance with§ 1.63, or substitute statement incompliance with § 1.64, executed by orwith respect to each actual inventor, theOffice will issue a ‘‘Notice ofAllowability’’ (PTOL–37) (but not a‘‘Notice of Allowance and Fee(s) Due’’(PTOL–85)) giving the applicant threemonths to file an oath or declaration incompliance with § 1.63, or substitutestatement in compliance with § 1.64,executed by or with respect to eachactual inventor, to avoid abandonment.VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00022 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6This three-month time period is notextendable under § 1.136(a). The‘‘Notice of Allowance’’ (PTOL–85) willnot be issued until the applicationincludes an oath or declaration incompliance with § 1.63, or substitutestatement in compliance with § 1.64,executed by or with respect to eachactual inventor.Section 1.495(c)(3)(iii) provides thatan international application in whichthe basic national fee under 35 U.S.C.41(a)(1)(F) has been paid and for whichan application data sheet in accordancewith § 1.76 has been filed may betreated as complying with 35 U.S.C. 371for purposes of eighteen-monthpublication under 35 U.S.C. 122(b) and§ 1.211 et seq. Section 4508 of theAmerican Inventors Protection Act of1999 provides that its eighteen-monthpublication provisions apply toapplications (other than for a designpatent) filed under 35 U.S.C. 111(a) onor after November 29, 2000, and toapplications in compliance with 35U.S.C. 371 that resulted frominternational applications filed under 35U.S.C. 363 on or after November 29,2000. See Pub. L. 106–113, 113 Stat.1501, 1501A–566 through 1501A–567(1999). As discussed previously, aninternational application is not incompliance with 35 U.S.C. 371 until theapplicant files the inventor’s oath ordeclaration. See 35 U.S.C. 371(c)(4).Thus, this provision permits the Officeto treat an international application inwhich the basic national fee under 35U.S.C. 41(a)(1)(F) has been paid and forwhich an application data sheet inaccordance with § 1.76 has been filed ascomplying with 35 U.S.C. 371 forpurposes of eighteen-month publication.There is a distinction between treatingan international application without theinventor’s oath or declaration ascomplying with 35 U.S.C. 371 forpurposes of eighteen-month publicationand treating an international applicationwithout the inventor’s oath ordeclaration as fulfilling therequirements of 35 U.S.C. 371 for patentterm adjustment purposes. The PCTprovides for eighteen-month publication(PCT Article 21) and thus thepublication by the Office of aninternational application that is incompliance with 35 U.S.C. 371 is arepublication of the application. SeeChanges to Implement Eighteen-MonthPublication of Patent Applications, 65FR 57021, 57045 (Sept. 20, 2000)(comment 47 and response). Patent termadjustment, however, has an impact onthe rights of third parties to theapplication process (the public). See 35U.S.C. 282(c) (provides a defense based