UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

48800 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESentity prior to examination of theapplication to determine whether anexception under 35 U.S.C. 102(b), asamended in the AIA, is applicable andto conduct a double patenting analysis.Accordingly, an applicant may file theapplication and identify the inventiveentity in either an application data sheetunder § 1.76 or in the inventor’s oath ordeclaration. If an application data sheetis submitted with the application orwithin the period provided in§§ 1.53(f)(1) or (f)(2), an applicant maypostpone submission of the inventor’soath or declaration until the applicationis in condition for allowance. The Officedoes not generally question whether theidentified inventive entity is theinventor except in interference andcontested cases.Comment 5: One comment suggestedthat the proposed rules not include arequirement for notification of a changein ownership no later than payment ofthe issue fee.Response: 35 U.S.C. 118 requires theOffice to grant the patent to the realparty in interest where the applicationwas filed under 35 U.S.C. 118 by aperson other than the inventor. In orderfor the Office to carry out this statutorymandate, the Office must be notified ofany change in the real party in interestno later than payment of the issue fee.Therefore, § 1.46, as adopted in thisfinal rule, requires applicants to notifythe Office of any change in the realparty in interest no later than paymentof the issue fee in the situation wherea real party in interest has filed theapplication under § 1.46.B. Oath/Declaration1. Time of SubmissionComment 6: A number of commentssuggested that, in view of 35 U.S.C.115(f), the Office should not requireapplicants to file the inventor’s oath ordeclaration until the application is incondition for allowance. One commentsupported early submission of the oathor declaration as better for theexamination process and patentpendency.Response: In response to thecomments, this final rule permitsdelaying submission of the inventor’soath or declaration until the applicationis otherwise in condition for allowance.The inventor’s oath or declaration willnot be required within the periodspecified in §§ 1.53(f)(1) or (f)(2) butmay be filed when the application isotherwise in condition for allowance ifthe application is an original (nonreissue)application that contains anapplication data sheet in accordancewith § 1.76 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.It should be noted that 35 U.S.C.115(f) does not provide that anapplicant is entitled as a matter of rightto postpone submission of the inventor’soath or declaration until an applicationis in condition for allowance. TheOffice’s authority to set the period (andconditions) under which the inventor’soath or declaration may be submittedafter the filing date of an application isset forth in 35 U.S.C. 111(a)(3) (‘‘Theapplication must be accompanied by thefee required by law. The fee and oath ordeclaration may be submitted after thespecification and any required drawingare submitted, within such period andunder such conditions, including thepayment of a surcharge, as may beprescribed by the Director.’’) and (a)(4)(‘‘Upon failure to submit the fee andoath or declaration within suchprescribed period, the application shallbe regarded as abandoned, unless it isshown to the satisfaction of the Directorthat the delay in submitting the fee andoath or declaration was unavoidable orunintentional.’’). See 35 U.S.C. 111(a)(3)and (a)(4) (AIA changes emphasized).Some previous legislative proposals(e.g., S. 515 and H.R. 1260 in the 111thCongress) would have changed thisprovision to delete any reference to anoath (or declaration) such that the Officecould not set the period (andconditions) under which the inventor’soath or declaration could be submittedafter the filing date of an application.However, the AIA maintains theexisting provisions of 35 U.S.C.111(a)(3) and (a)(4), adding only ‘‘ordeclaration’’ after every instance. Thus,the Office retains the authority to set theperiod (and conditions) under whichthe inventor’s oath or declaration mustbe submitted.It should also be noted that 35 U.S.C115(f) does not require the Office topermit applicants to postponesubmission of the inventor’s oath ordeclaration until allowance. The Officepreviously proposed under existing 35U.S.C. 111 and 115 to permit applicantsto delay submission of an oath ordeclaration until the expiration of a timeperiod set in the ‘‘Notice ofAllowability.’’ See Changes toImplement the Patent Business Goals,63 FR 53497, 53503–06 (Oct. 5, 1998).The Office, however, did not proceedwith that proposal. See Changes toImplement the Patent Business Goals,64 FR 53771, 53773–74 (Oct. 4, 1999).VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00026 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6Thus, the only effect of 35 U.S.C. 115(f)is to preclude the Office from issuing anotice of allowance until each requiredinventor’s oath or declaration has beenfiled.Comment 7: Two commentsexpressed concern about the fees to becharged for the late submission of anoath or declaration. One comment statedthat 35 U.S.C. 111(a) and 371 do notrequire a surcharge for submitting theoath or declaration after the filing date.One comment stated that thepreliminary proposed patent feeschedule published February 7, 2012,indicated that the $130 surcharge wouldbe increased to $140 and that no actualunit cost was associated with this feebecause there was no specific activitysupporting it other than collecting anddepositing the fee. The comment statedthat this contradicts the Office’sstatement in the notice of proposedrulemaking that applications filedwithout an oath or declaration requirespecial processing. The comment alsoquestioned the proposed fee of $3,000for filing the oath or declaration up tothe notice of allowance on the samebasis that there is no specific activitysupporting the fee other than collectingand depositing the fee.Response: The notice of proposedrulemaking did not propose, and thisfinal rule does not adopt, any change tothe late filing surcharge under § 1.16(f).As discussed previously, 35 U.S.C.111(a)(3) provides that: ‘‘The fee andoath or declaration may be submittedafter the specification and any requireddrawing are submitted, within suchperiod and under such conditions,including the payment of a surcharge, asmay be prescribed by the Director.’’While the Office is not ‘‘required’’ tocharge this surcharge, the Office ispermitted to require it. The surcharge isdue to the additional processing costsincurred when the inventor’s oath ordeclaration is submitted after filing ofthe application and the initialprocessing of the application. The factthat the cost of the additional processingof the later-submitted oath ordeclaration is not tracked separatelyfrom other pre-examination costs doesnot negate the existence of this cost. Inaddition, under the changes in this finalrule the Office will incur additionalcosts due to the need to tracksubmission of the inventor’s oath ordeclaration up to allowability of theapplication.The Office published materials on itsInternet Web site in February 2012,associated with a rulemaking to set andadjust patent fees using the authorityprovided in section 10 of the AIA,which proposed a $3,000 fee to