UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48803sroberts on DSK5SPTVN1PROD with RULEShome or business address. Additionally,a post office box may be used as themailing address. The Office reviewsresidence information to ensure that aresidence is provided, but the Officedoes not review the manner in whichthe residence is stated. Thus, applicantsshould not have concerns aboutdistinctions between province andprefecture.Comment 21: One comment requestedrevising the title to be ‘‘Inventor’s oathor declaration’’ to distinguish thedeclaration requirements in § 1.63 fromwho may apply for a patent, whichshould be addressed by § 1.41.Response: The Office agrees that thetitle of § 1.63 should read ‘‘Inventor’soath or declaration.’’ The title has beenrevised as suggested.Comment 22: One comment statedthat proposed § 1.63(c)(2) needs to becorrected for grammatical clarity since itis unclear how a reference itself wouldconstitute an assignment.Response: Section 1.63(e)(2) containsthe language of proposed § 1.63(c)(2).The provision merely explains that thephrase ‘‘oath or declaration’’ under§ 1.63 as referred to in the rules coversa combination assignment and oath ordeclaration document.Comment 23: One comment suggestedthat since a ‘‘wet’’ signature is requiredfor a declaration, the practitioner shouldbe allowed to obtain a ‘‘wet’’ signaturefor the practitioner’s file and thensubmit an S-signature by thepractitioner with a notice to the Officethat a ‘‘wet’’ signature is on file withthis practitioner and will be supplied tothe Office if requested.Response: An oath or declaration maybe signed either with a wet(handwritten, per § 1.4(d)(1)) signatureor an S-signature (e.g., a printed nameinserted between forward slashes, per§ 1.4(d)(2)), regardless of whether theoath or declaration is filed with theOffice in paper, facsimile transmitted, orfiled via the Office’s Electronic FilingSystem (EFS-Web). An S-signature isany signature not covered by § 1.4(d)(1),and an S-signature must be personallyinserted by the signer per § 1.4(d)(2)(i).The practice suggested in the commentwould not have the signer personallyinsert the S-signature. Thus, it wouldnot be a proper signature by theinventor.Comment 24: One comment suggestedretaining in § 1.63 the statement that nominimum age is required to sign an oathor declaration.Response: Section 1.63(c) continues torecite that there is no minimum age fora person to be qualified to execute anoath or declaration.Comment 25: One comment requestedinformation as to whether the Officewill have updated forms to reflect theproposed rule changes at the same timethe rules take effect.Response: The Office will haverevised forms available prior to theeffective date of this final rule.C. Substitute StatementsComment 26: Several commentsquestioned the need for proof of factsregarding the inventor who is notexecuting the inventor’s oath ordeclaration when filing a substitutestatement where an assignee, party towhom an inventor is under anobligation to assign or a party whootherwise shows sufficient proprietaryinterest in the matter files theapplication.Response: In response to thecomments, the Office is discontinuingthe practice of routinely requiring proofof facts when an oath or declaration isnot executed by each inventor. Section1.64 provides that an applicant under§§ 1.43, 1.45 or 1.46 may execute asubstitute statement with identifyinginformation regarding (1) the inventorand the person executing the statement,and (2) the particular permittedcircumstances involved, e.g., theinventor cannot be reached or hasrefused to execute the oath ordeclaration. Furthermore, a person maynot execute a substitute statementunless that person has reviewed andunderstands the contents of theapplication and is aware of the duty todisclose to the Office all informationthat is material to patentability. Proof ofthe circumstances (e.g., attempts tocontact the inventor) is no longerrequired.Comment 27: One comment expressedconcern about the effect of 35 U.S.C.115(d)(2)(B). The comment identifiedthe situation where one joint inventorrefuses to execute the oath ordeclaration and since none of theinventors are under an obligation toassign, the other executing inventorsmay not be able to provide a substitutestatement on behalf of the nonsigninginventor.Response: 35 U.S.C. 116(b) providesthat if a joint inventor refuses to join inan application for patent or cannot befound or reached after diligent effort,the application may be made by theother inventor on behalf of himself andthe omitted inventor. Section 1.45, asamended in this final rule, permits theother joint inventor or inventors to makethe application for patent as theapplicant on behalf of themselves andthe omitted inventor if a joint inventorrefuses to join in an application forVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00029 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6patent or cannot be found or reachedafter diligent effort. 35 U.S.C. 115(d)(1)provides that the applicant for patentmay provide a substitute statement inlieu of execution of an oath ordeclaration by an inventor under 35U.S.C. 115(a) under such additionalcircumstances as the Director specifiesby regulation. Thus, § 1.64 as adopted inthis final rule permits another jointinventor to execute a substitutestatement in lieu of execution of an oathor declaration by the omitted inventor ifa joint inventor refuses to join in anapplication for patent (regardless ofwhether there is an obligation to assign)or cannot be found or reached afterdiligent effort.Comment 28: One comment notedproposed § 1.47 and requested that theassignee be allowed to execute the oathor declaration on behalf of the assigninginventor in general, and not only incircumstances where the inventor hasrefused or cannot be found or reachedto execute the oath or declaration.Response: 35 U.S.C. 115(a) explicitlyrequires execution of an inventor’s oathor declaration by each inventor exceptas otherwise provided in 35 U.S.C. 115.The situations in which the applicantfor patent may submit a substitutestatement in lieu of an oath ordeclaration with respect to an inventorare set forth in 35 U.S.C. 115(d)(2).D. Combined Declaration andAssignment1. GenerallyComment 29: One commentrecognized that the AIA provision fordual-purpose documents (assignmentand oath or declaration) is alreadypossible and asserted that the AIAprohibits the Office from making rulesthat impede the use of dual-purposedocuments, such as requiring therecordation of the document beforesubmission in the application asrequired by proposed § 1.63(c)(1)(ii).The comment asserted that therecordation requirement is neitherbeneficial to the public nor beneficial toassignees. The comment noted thatsome assignees may save up and thenrecord multiple assignments at once tosave on recording fees. In the absence ofan explanation as to why flexibility is tobe taken away, the comment suggestedthat the proposed requirement forrecordation should not be adopted andthe assignment should be made ofrecord in the application file.A few comments, however, opposedsubmitting a copy of an assignmentcontaining the statements required of anoath or declaration in the applicationfile and noted that Congress did not