UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

48802 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESassignment meeting the requirements of35 U.S.C. 115(e) was executed withrespect to the earlier-filed applicationby the individual and was recorded inconnection with the earlier-filedapplication. Thus, an additionalinventor’s oath or declaration would benecessary in a continuing applicationonly for an inventor for whom an oathor declaration was not submitted in theprior-filed application. Section 1.63(d),as adopted in this final rule, does notinclude the proposed requirement thatthe statements in the copy of theinventor’s oath or declaration from aprior-filed application also beapplicable to the continuingapplication.5. Supplemental Oath or DeclarationComment 16: One comment assertedthat once a one-time statement from aninventor has been made in satisfactionof 35 U.S.C. 115, 35 U.S.C. 115(h)(2)precludes the Office from requiring anysupplemental oath or declaration.Several comments objected to proposed§ 1.67 and asserted that the Office wasproposing to merely retain requirementsfor supplemental oaths, notwithstandingthe statutory prohibition against them.Response: Section 1.67(c) providesthat the Office will not require a personwho has executed an oath or declarationin compliance with 35 U.S.C. 115 and§ 1.63 or § 1.162 to provide anadditional oath or declaration. 35 U.S.C.115(h)(2) precludes the Office fromrequiring a supplemental oath ordeclaration only if the initial oath ordeclaration complied with 35 U.S.C. 115and § 1.63 or § 1.162.Comment 17: One comment expressedconcern about the elimination ofsupplemental oaths (proposed § 1.67(b)),as they give the inventor theopportunity to object to the assignee’sinterpretation of the invention whichmay be broader than the inventor’sunderstanding of the description. Thecomment noted the existing requirementthat reissue oaths or declarations besigned by the inventors when one ormore claims are being broadened, andsuggested that inventors be permitted torequest ‘‘post grant review’’ to clarifynew matter issues that may arise fromdifferences in interpretation.Response: 35 U.S.C. 115(h)(1) and§ 1.67 provide that an applicant maysubmit an inventor’s oath or declarationto correct any deficiencies orinaccuracies present in an earlier-filedinventor’s oath or declaration. 35 U.S.C.115(h)(2) provides that supplementalstatements are not required where theoath or declaration meets 35 U.S.C.115(a) or the assignment meets therequirements of 35 U.S.C. 115(e).Inventors still must execute an oath ordeclaration except under the permittedcircumstances. Thus, inventors wouldstill have an opportunity to review theapplication in connection with theexecution of the oath or declaration andraise any concerns regarding breadth ofthe claimed invention with the assignee.Moreover, an inventor may have accessto the application file and can followthe prosecution. 35 U.S.C. 321(a)provides that a person who is not theowner may request post grant review ofa patent.6. Effective DateComment 18: One commentquestioned whether the Office wouldaccept oaths or declarations (1) In anapplication filed prior to September 16,2012, in which the oath or declarationis filed on or after September 16, 2012;and (2) in an application filed on orafter September 16, 2012, where theoath or declaration was executed priorto September 16, 2012. One commentsuggested that the Office clarify § 1.63 toaddress applications that bridge theeffective date of the rule to make clearthat a new declaration will not berequired in a continuing applicationwhere the prior declaration wascompliant with the new requiredstatutory statements. A few commentsrecommended that oaths or declarationsfiled before September 16, 2012, begrandfathered in and accepted incontinuing applications filed on or afterSeptember 16, 2012, even though theoaths or declarations contain thelanguage in former 35 U.S.C. 115 andnot the language in new 35 U.S.C.115(b).Response: The changes to 35 U.S.C.115 in the AIA apply to any applicationfiled on or after September 16, 2012.Accordingly, the date of execution ofthe oath or declaration is not relevant,particularly as the Office does not checksuch dates of execution. MPEP § 602.05.For applications filed prior toSeptember 16, 2012, any oath ordeclaration filed before, on, or afterSeptember 16, 2012, must comply withthe oath and declaration rules in effectprior to September 16, 2012. Any oathor declaration submitted in anapplication filed on or after September16, 2012, (regardless of the date ofexecution of the oath or declaration)must meet the requirements of 35 U.S.C.115 as amended by the AIA.With respect to continuingapplications, 35 U.S.C. 115(g)(1)(A)provides an exception to a newlyexecuted oath or declaration only wherethe oath or declaration in the earlierfiledapplication meets the requirementsof amended 35 U.S.C. 115(a) whichVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00028 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6must include the required statements in35 U.S.C. 115(b). Accordingly, a copy ofan oath or declaration from a priorapplication filed before September 16,2012, must meet the requirements of 35U.S.C. 115 as amended by the AIA.Nevertheless, in view of the changesto permit applicants to postpone thesubmission of the inventor’s oath ordeclaration until the application isotherwise in condition for allowance,the Office will no longer review an oathor declaration in an application under35 U.S.C. 111(a) for compliance with§ 1.63 (or a substitute statement forcompliance with § 1.64) during theexamination process. The Office willreview applications to determinewhether the application includes anoath or declaration executed by or withrespect to each inventor when theapplication is in condition forallowance.7. MiscellaneousComment 19: One comment notedthat 35 U.S.C. 115 requires ‘‘the name ofthe inventor,’’ whereas proposed§ 1.63(a)(2) requires identification by‘‘his or her full name without anyabbreviation (except for a middleinitial)’’ and thus places furtherrestrictions on what would otherwise bean uncomplicated requirement. Anothercomment stated that the rules shouldpermit an inventor to abbreviate his orher first name if he or she is known byhis or her middle name.Response: The Office agrees that thephrase ‘‘his or her full name withoutany abbreviation (except for a middleinitial)’’ is more complicated thannecessary. The requirement foridentification of the name of theinventor in the rules of practice (e.g.,§ 1.63(a)(1)) will be for the legal name ofthe inventor.Comment 20: One comment suggestedeliminating the requirement for theresidence in that: (1) It is still unclearwhat is intended by residence (e.g., city,state, province, prefecture, etc.); (2)many inventors would prefer to keeptheir residence private, especially wherethe mailing address is the place ofemployment; and (3) it requiresassignees to violate their domesticprivacy laws in some countries (e.g.,United Kingdom) by requiring inventorsto make residence information publiclyavailable.Response: The comment appears toconfuse the separate requirements forresidence and mailing address. Theresidence, as noted in MPEP § 605.02, isa city and either a state or foreigncountry, while a mailing address, asnoted in MPEP § 605.03, is where onecustomarily receives mail, such as one’s