UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48799sroberts on DSK5SPTVN1PROD with RULESthe inventor statements in applicationsfiled by assignees and obligatedassignees to simplify the submission ofthe inventor statements, facilitate theprocess by which an assignee orobligated assignee may file andprosecute applications, and accomplishgreater international harmonization.One comment suggested that, in theinterest of procedural harmonizationwith the patent laws of other countries,the Office should dispense with the oathor declaration entirely. One comment,however, expressed agreement withmost of the changes in the notice ofproposed rulemaking, and agreementwith the requirement that inventorsmust execute oaths or declarations.Response: The Office agrees that theAIA changes 35 U.S.C. 118 to permit anassignee, an obligated assignee, or aperson who otherwise shows sufficientproprietary interest in the matter tomake an application as the ‘‘applicant.’’Accordingly, this final rule revises therules of practice to provide thatassignees, obligated assignees (parties towhom an inventor is obligated to assign)and parties who otherwise showsufficient proprietary interest in thematter may file an application for patentas the applicant. Historically, being theapplicant was synonymous with beingthe one to execute the oath ordeclaration under 35 U.S.C. 115.However, the AIA amends 35 U.S.C. 115to separate being the applicant frombeing the one who must execute theoath or declaration under 35 U.S.C. 115(normally the inventor). Thus, 35 U.S.C.115 and 118, as amended by the AIA,provide that an application may be filedby a person other than the inventor asthe applicant, but 35 U.S.C. 115 stillalso requires an oath or declaration fromthe inventor (except in certainsituations). The situations in which theapplicant for patent may submit asubstitute statement in lieu of an oath ordeclaration with respect to an inventorare set forth in 35 U.S.C. 115(d)(2).Comment 2: A number of commentsrequested that the Office recognize theability of assignees, obligated assignees,and persons who otherwise showsufficient proprietary interest in thematter to file an application and haverequested that the requirements besimplified. A few comments suggestedthat in the case of an assignment orobligation to assign, no documentsshould be required to perfect the rightto file the application. The commentsstated that an application filed by theassignee or an obligated assignee plusan oath or declaration by the inventorswould be sufficient. One commentsuggested that the Office should requireno more than a copy of the assignmentto perfect the right to execute an oath ordeclaration, as the inventor no longerhas a property interest and thus theassignee should be able to make theapplication without additionalrequirements. One comment suggestedthat the Office permit assignees to makecertifications regarding ownership inthe application data sheet.Some comments recognized that theOffice would likely want documentscontaining ‘‘proof of the pertinent factsand a showing that such action isappropriate to preserve the rights of theparties’’ where an application is filed bya party with sufficient proprietaryinterest. However, two comments statedthat there is no need for the Office toreview these documents to determinesufficiency, but rather the Office shouldonly review them to determine whetherthey appear to satisfy the requirementsfor submission, with one commentstating that any challenge to a filingshould be made in court. One commentrequested that the Office not includeany confidential documents used as‘‘proof’’ in the public image filewrapper. The comment suggested thatthe Office could state in the file wrapperthat certain agreements were reviewedby the Office and found to fulfill thecriteria.Response: Section 1.46 as adopted inthis final rule permits the filing ofapplications by assignees, obligatedassignees, and persons who otherwiseshow sufficient proprietary interest inthe matter with an application datasheet identifying the party filing theapplication (the applicant). Forassignees and obligated assignees,documentary evidence of an ownershipinterest should be recorded no later thanthe date the issue fee is paid. See§ 1.46(b)(1).Section 1.46 provides that parties whootherwise show sufficient proprietaryinterest in the matter must also submita petition with documentary evidence ofthe sufficient proprietary interest. 35U.S.C. 118 provides that a party withsufficient proprietary interest may filean application, but the filing is done onbehalf of and as agent for the inventorson proof of the pertinent facts. TheOffice believes that the petition isnecessary in these situations todetermine whether an appropriate partyis filing the application, which requiressome additional review as to theassertion of sufficient proprietaryinterest. It is not the intent of the Officeto make a definitive factualdetermination of the showing ofsufficiency of the proprietary interest,but the showing will be reviewed toensure that the party has a valid basisfor being treated as the applicant forVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00025 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6patent on behalf of and as agent for theinventors.The documentary evidence submittedto establish proof of sufficientproprietary interest is not always asclear-cut as an assignment or adocument showing an obligation toassign. Thus, it is appropriate that thedocumentary evidence be visible in thefile record when the applicationbecomes available to the public.Comment 3: A number of commentssuggested that all that should berequired on filing is a two-partstatement affirming: (1) that theapplicant is either the inventor, or isauthorized by the inventor to file theapplication, and (2) that the applicanthas filed with the application or will filean inventor statement under 35 U.S.C.115 before receiving a notice ofallowance. In addition to the two-partstatement, one comment suggested thatevery application as filed could berequired to contain identifyinginformation essential to the orderlyprocessing of the application, such asthe name of the inventor, the name ofthe applicant (if different from theinventor), residence, andcorrespondence address. A number ofcomments suggested that, other than thetwo-part statement and identifyinginformation, no more than the minimumaverments mandated by 35 U.S.C. 115(b)should be required in an inventorstatement.Response: In response to thecomments, this final rule revises § 1.63to require only the statements that arerequired by 35 U.S.C. 115(b), providedthat an application data sheet issubmitted to provide inventor and otherapplication information.Comment 4: A number of commentssuggested that the application data sheetshould be used to provide inventorinformation instead of an oath ordeclaration. The comments suggestedthat the vast majority of applications donot have inventorship or assignmentissues and the process of dealing withthe formalities should be deferred untilan indication of allowable subjectmatter. Another comment stated that theassignee-applicant is in the best positionto decide who is to be named as aninventor, based on a legal analysis ofwhat it takes to be an inventor, and theOffice on its own should not raiseinventorship issues, as such issues arebest handled through a derivation actionor a court action. One comment notedthat early submission of the declarationcan be difficult for foreign applicantsand entities whose inventors are nolonger available.Response: The Office needs thecorrect identification of the inventive