UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

48806 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESinventorship of an internationalapplication entering the national stageunder 35 U.S.C. 371 in which no oathor declaration has been filed.Response: In response to thecomments, the Office has revised § 1.48in this final rule. Section 1.48(a) appliesto nonprovisional applications,including U.S. national stageapplications in which the basic nationalfee under 35 U.S.C. 41(a)(1)(F) has beenpaid. Under § 1.48(a), the requirementsfor correcting inventorship have beeneased, requiring only an applicationdata sheet setting forth the inventiveentity, a processing fee, and an oath ordeclaration as required by § 1.63 (orsubstitute statement in compliance with§ 1.64) for any actual inventor who hasnot executed such an oath ordeclaration. Furthermore, recognizingthat inventorship sometimes changes ina national stage application from thatoriginally indicated in the internationalphase, § 1.41(e) allows applicants to setinventorship in a U.S. national stageapplication without having to requestcorrection under § 1.48(a) by simplyincluding with the initial submissionunder 35 U.S.C. 371 an application datasheet in accordance with § 1.76 settingforth the correct inventive entity.Comment 42: One commentquestioned whether an application datasheet filed with a national stage entry,after the PCT filing date, is considereda supplemental application data sheet,or whether it was intended that thedocument be called an application datasheet, in which case § 1.76(a) should beamended to recite ‘‘or after payment ofthe basic national fee for a national stageentry under 35 U.S.C. 371.’’Response: The distinction between‘‘application data sheet’’ and‘‘supplemental application data sheet’’has been a source of confusion forapplicants. Accordingly, the Officerevised § 1.76 to eliminate‘‘supplemental application data sheet’’and simply refer to ‘‘application datasheet.’’ In this regard, § 1.76(c) in thisfinal rule, now indicates thatinformation in a previously submittedapplication data sheet, or the inventor’soath or declaration under § 1.63, § 1.64,or § 1.67, or otherwise of record, may becorrected or updated until payment ofthe issue fee by a new application datasheet providing corrected or updatedinformation, except that inventorshipchanges must comply with therequirements of § 1.48, foreign priorityand domestic benefit informationchanges must comply with §§ 1.55 and1.78, and correspondence addresschanges are governed by § 1.33(a).G. Reissue ApplicationsComment 43: One comment suggestedamending the title of § 1.172(‘‘Applicants’’) to include a reference to‘‘inventor’’ because the term ‘‘inventor’’is no longer synonymous with‘‘applicant.’’ One comment suggestedrevising the parenthetical in§ 1.172(b)(2)(ii) by replacing the conceptof the assignee executing the oath ordeclaration with the assignee providinga substitute statement as the applicantin the patent being reissued. Onecomment suggested that §§ 1.172 and1.175 be revised to provide for filing asubstitute statement, rather than an oathor declaration, in the permittedcircumstances.Response: The use of ‘‘applicant’’ inthe title of § 1.172 is a generic term thatwill cover assignees and inventors wheneither are the applicant. In this finalrule, § 1.172 has been revised to nolonger address execution of the oath ordeclaration. Section 1.175(c) providesfor filing a substitute statement inreissue applications by its reference to§ 1.64.Comment 44: One comment suggestedeliminating the requirement foridentifying whether a claim isbroadened under § 1.175(b). Thecomment asserted that the requirementis a complex legal issue in thatcancellation of one claim may constitutebroadening of another claim, and claimscope may be narrowed even thoughclaims are not amended, and such legaldetermination should be left to theexaminer and not to applicant as part ofan inventor’s declaration.Response: 35 U.S.C. 251(d) places atime limit on the filing of a broadeningreissue application. Accordingly,applicants must make a determinationas to whether a reissue application isbeing filed with a broadened claim.Applicants, in filing a reissueapplication, already have a goodindication as to whether the error thatrenders the patent wholly or partlyinoperative or invalid is one that isdriven by a need to broaden or narrowthe claims. Thus, focusing applicants’attention on whether a claim is beingbroadened should not be burdensomeon applicants, and is beneficial toexamination of the reissue application.Comment 45: One comment statedthat it is unclear why at least one errorbeing relied upon as the basis for reissuemust be identified in the declaration,and suggested that such an error couldbe identified by the attorney of record.Two comments questioned therequirement for a supplemental oath ordeclaration in a reissue applicationwhere all errors previously identifiedVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00032 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6are no longer relied upon, particularlyin view of the elimination of the‘‘without deceptive intent’’ languagefrom 35 U.S.C. 251.Response: The requirement to initiallyidentify the error being corrected in theoath or declaration has been retained asthe Office believes that the error beingused to support jurisdiction for a reissueshould be acknowledged by theinventor. In view of 35 U.S.C. 115(h)(2),the Office will permit the practitioner toidentify a replacement error where thefirst error is no longer being corrected.The retention of a requirement, albeit bypractitioner statement rather than bysupplemental oath or declaration, toidentify an error being corrected (wherethe initially identified error beingcorrected is no longer being corrected)is deemed necessary so that the filerecord clearly establishes jurisdictionfor the reissue. It should be noted,however, that where the original oath ordeclaration does not comply with§ 1.175, the Office will require acompliant oath or declaration, and apractitioner statement will not besufficient.H. Application Data Sheet (§ 1.76)1. Domestic Benefit and Foreign PriorityClaimsComment 46: One comment suggestedthat the Office construe an identificationof 35 U.S.C. 120 benefit information inan application data sheet as aninstruction to amend the application toinclude that information if it is notalready present, or to replace suchinformation in the specification if it isinconsistent.Response: An application data sheetis part of the application. See § 1.76(a).Comment 47: One commentquestioned whether applications filedbefore September 16, 2012, would begrandfathered in with regard to how aclaim for foreign priority or domesticbenefit must be made. The commentrequested clarification as to whether therequirement that all priority and benefitclaims be in an application data sheet orsupplemental application data sheetdepends on the filing date of theapplication or on the date of filing of theforeign priority or domestic benefitclaim.Response: Applications filed on orafter September 16, 2012, must complywith §§ 1.55 or 1.78 as amended by thisfinal rule. Applications filed beforeSeptember 16, 2012, need not complywith §§ 1.55 or 1.78 as amended by thisfinal rule (but would need to complywith §§ 1.55 or 1.78 as previously ineffect).