UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

48798 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESregistration, unless there is anassignment.Section 3.73(b) is amended to provideonly for trademark matters (patentmatters are provided for in § 3.73(c)).Section 3.73(b) provides that in order torequest or take action in a trademarkmatter, the assignee must establish itsownership of the trademark property of§ 3.73(a) to the satisfaction of theDirector, and that the establishment ofownership by the assignee may becombined with the paper that requestsor takes the action. Section 3.73(b)further provides that ownership isestablished by submitting to the Officea signed statement identifying theassignee, accompanied by either: (1)documentary evidence of a chain of titlefrom the original owner to the assignee(e.g., copy of an executed assignment),which documents submitted to establishownership may be required to berecorded pursuant to § 3.11 in theassignment records of the Office as acondition to permitting the assignee totake action in a matter pending beforethe Office; or (2) a statement specifyingwhere documentary evidence of a chainof title from the original owner to theassignee is recorded in the assignmentrecords of the Office (e.g., reel and framenumber).Section 3.73(c) provides that in orderto request or take action in a patentmatter, an assignee who is not theoriginal applicant must establish itsownership of the patent property of§ 3.73(a) to the satisfaction of theDirector, and that the establishment ofownership by the assignee may becombined with the paper that requestsor takes the action. Section 3.73(c)further provides that ownership isestablished by submitting to the Officea signed statement identifying theassignee, accompanied by either: (1)Documentary evidence of a chain of titlefrom the original owner to the assignee(e.g., copy of an executed assignment),and that the submission of thedocumentary evidence must beaccompanied by a statement affirmingthat the documentary evidence of thechain of title from the original owner tothe assignee was or concurrently isbeing submitted for recordationpursuant to § 3.11; or (2) a statementspecifying where documentary evidenceof a chain of title from the originalowner to the assignee is recorded in theassignment records of the Office (e.g.,reel and frame number).Section 3.73(c)(2) provides that if thesubmission is by an assignee of less thanthe entire right, title and interest (e.g.,more than one assignee exists), theOffice may refuse to accept thesubmission as an establishment ofownership unless: (1) Each assigneeestablishes the extent (by percentage) ofits ownership interest, so as to accountfor the entire right, title and interest inthe application or patent by all partiesincluding inventors; or (2) each assigneesubmits a statement identifying theparties including inventors whotogether own the entire right, title andinterest and stating that all theidentified parties own the entire right,title and interest.Section 3.73(c)(3) provides that if twoor more purported assignees fileconflicting statements under§ 3.73(c)(1), the Director will determinewhich, if any, purported assignee willbe permitted to control prosecution ofthe application. This provision sets outthe Office’s practice for treating two ormore conflicting statements under§ 3.73(c), currently discussed in MPEP§ 324, IX.Section 3.73(d) provides that thesubmission establishing ownershipunder § 3.73(b) (for trademark matters)or § 3.73(c) (for patent matters) mustshow that the person signing thesubmission is a person authorized to acton behalf of the assignee by: (1)Including a statement that the personsigning the submission is authorized toact on behalf of the assignee; (2) beingsigned by a person having apparentauthority to sign on behalf of theassignee; or (3) for patent matters only,being signed by a practitioner of record.37 CFR Part 5Section 5.25: Sections 5.25(a)(3)(iii)and 5.25(b) are amended to deleted the‘‘without deceptive intention’’ clausesfor consistency with the change to 35U.S.C. 184 in section 20 of the AIA.37 CFR Part 10Section 10.23: Section 10.23(c)(11) isremoved and reserved. Section 1.52(c)no longer prohibits changes to theapplication papers after execution of theinventor’s oath or declaration. Thus,§ 10.23 is amended to eliminate theclause concerning knowingly filing orcausing to be filed an applicationcontaining any material alteration madein the application papers after thesigning of the accompanying oath ordeclaration without identifying thealteration at the time of filing theapplication papers (except as permittedby § 1.52(c)) as conduct whichconstitutes a violation of § 10.23.37 CFR Part 41Section 41.9: Section 41.9(a) isamended to change the reference to‘‘3.73(b)’’ to ‘‘§§ 3.71 and 3.73.’’Comments and Responses toComments: As discussed previously, theVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00024 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6Office published a notice on January 6,2012, proposing to change the rules ofpractice to implement the inventor’soath or declaration provisions of section4 of the AIA. See Changes to Implementthe Inventor’s Oath or DeclarationProvisions of the Leahy-Smith AmericaInvents Act, 77 FR at 982–1003. TheOffice received thirty-one writtencomments from intellectual propertyorganizations, academia, industry, lawfirms, individual patent practitioners,and the general public in response tothis notice. The comments and theOffice’s responses to the commentsfollow:A. Assignee Filing.B. Oath/Declaration.1. Time of submission.2. Averments.3. Inventors named.4. Copies in continuing applications.5. Supplemental Oath or Declaration.6. Effective date.7. Miscellaneous.C. Substitute statements.D. Combined declaration and assignment.1. Generally.2. Recordation of assignments.E. Power of attorney.F. PCT.G. Reissue applications.H. Application data sheet (§ 1.76).1. Domestic benefit and foreign priorityclaims.2. Form requirements.I. Miscellaneous rules.1. Mail stop (§ 1.1(e)).2. Signatures (§ 1.4).3. Juristic entity (§ 1.31).4. Correspondence address (§ 1.33).5. Person making declaration (§ 1.64).6. Noncompliant declarations (§ 1.67).7. Statement under § 3.73.8. Lack of deceptive intent.A. Assignee FilingComment 1: A number of commentsquestioned the Office permittingassignee filing only under the narrowexceptions of death, incapacity, absenceor refusal. A number of commentssuggested that the rules be revised torecognize that ‘‘applicant’’ and‘‘inventor’’ are no longerinterchangeable because assignees,parties to whom an inventor is obligatedto assign, and parties with a sufficientproprietary interest in the matter, canalso be applicants. One comment statedthat by replacing the language in 35U.S.C. 118 (which formerly permittedfiling by other than the inventor only inthe situations where the inventor wasunwilling or unavailable to execute theoath or declaration) with broaderlanguage, Congress has in 35 U.S.C. 118authorized an assignee to file anapplication for a patent as the applicant.A number of comments requested thatthe rules be revised for submission of