UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48809sroberts on DSK5SPTVN1PROD with RULESinventors who sign should be removed.Another comment suggested that § 1.64be amended to reflect that a single oathor declaration document is not requiredand to eliminate the requirement for theresidence and mailing address of thelegal representative.Response: In response to thecomments, the provisions of former§ 1.64 have been eliminated. Section1.64 now provides for a substitutestatement in lieu of an oath ordeclaration and requires the residenceand mailing of address of the personsigning the substitute statement. TheOffice needs this information foridentification purposes and to be able tocommunicate with the person executingthe substitute statement in the eventthat this becomes necessary.6. Noncompliant Declarations (§ 1.67)Comment 62: One comment statedthat proposed § 1.67 included a criticalmisconception that a declaration may bemade by someone other than theinventor. Additionally, the commentstated that it is unclear how a deficiencyor inaccuracy relating to fewer than allthe applicants could be cured by aninventor’s declaration. Anothercomment stated that § 1.67 should beamended to reflect that a single oath ordeclaration document is not required.Response: Initially, it should be notedthat § 1.67 is directed to supplementaloaths or declarations and provides amechanism for applicants to correctdeficiencies or inaccuracies present inan earlier-filed inventor’s oath ordeclaration. Section 1.67, in this finalrule, prohibits the Office from requiringa person who has executed an oath ordeclaration that is in compliance with35 U.S.C. 115 and § 1.63 or § 1.162 toprovide an additional inventor’s oath ordeclaration for the application.However, the Office is not prohibitedfrom requiring a new oath or declarationin compliance with 35 U.S.C. 115 and§ 1.63 where the oath or declaration thatwas submitted does not comply with 35U.S.C. 115 and § 1.63. The Office notesthat former § 1.47(b) permitted anassignee to sign the oath or declarationfor the nonsigning inventor where noinventors were available. The assigneewould simply make the statements inthe oath or declaration on informationand belief. See former § 1.64(b). Section1.63(f), in this final rule, provides thatany reference to the inventor’s oath ordeclaration in this chapter means theoaths, declarations, or substitutestatements that have been collectivelyexecuted by or with respect to all of thejoint inventors. Accordingly, a singleoath or declaration document is notrequired under § 1.63 or § 1.67. Since§ 1.63 is amended to only require thatthe oath or declaration identify theinventor or joint inventor executing theoath or declaration rather, thanidentifying the entire inventive entity,§ 1.67 no longer refers to a deficiency orinaccuracy relating to fewer than all ofthe inventors or applicants.7. Statement Under § 3.73Comment 63: One commentsupported the proposed change to§ 3.73, but suggested a modification of§ 3.73(b). The comment noted thedifficulties practitioners face inattempting to reproduce reel and framenumbers, including time, effort and thepotential for typographical errors fromthe hand-keying required when formPTO/SB/96 is completed, and the needfor Office personnel to check theinformation character by character. Thecomment suggested that these effortscan be limited by permitting attachmentof a copy of the Abstract of Title orNotice of Recordation where theycontain the reel and frame numbers.Response: Section 3.73(c)(1)(i)requires documentary evidence of achain of title from the original owner tothe assignee. A copy of an executedassignment is only one example of thetype of documentary evidence that maybe submitted. Other types ofdocumentary evidence may besubmitted. An Abstract of Title orNotice of Recordation would beinsufficient documentary evidence sinceany person can submit documents forrecordation to Assignment RecordationBranch, therefore an Abstract of Titlemay list extraneous or erroneousdocuments unrelated to the chain oftitle.Comment 64: One comment statedthat, with respect to proposed§ 3.73(c)(3), the applicants should beallowed to also file a copy of a statementunder § 3.73(b) that was originally filedin a provisional application in anonprovisional application that claimsbenefit of the provisional application.Response: Section 3.73 does notprovide for the filing of a copy of astatement under § 3.73(c) in anonprovisional application that wasoriginally filed in a prior application,such as a provisional application whosebenefit is being claimed in thenonprovisional application. Generally,there is no need to file a § 3.73(c)statement in a provisional applicationand such statements are not usuallyfiled in provisional applications as suchapplications are not examined and donot undergo prosecution. Furthermore,where an assignee has filed such astatement in the provisional application,the assignee would presumably be theVerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00035 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6applicant filing the nonprovisionalapplication. An assignee who is theapplicant who filed the applicationneed not to file a § 3.73(c) statement.Comment 65: One comment statedthat, with respect to proposed§ 3.73(c)(3), if a statement under§ 3.73(b) in the earlier application isfrom an assignee, it should not berequired that the inventorship of thecontinuing application be the same as orless than that of the earlier application,if the newly added inventors have alsoassigned, or are under an obligation toassign, to the same assignee and theassignment is recorded at the Office.Response: Section 3.73 does notprovide for the filing of a copy of astatement under § 3.73(c) in acontinuing application that wasoriginally filed in the prior application.Where an assignee has filed a statementunder § 3.73(c) in a prior application,the assignee may file the continuingapplication as the applicant and wouldnot need to file a § 3.73(c) statement.Comment 66: One comment suggestedthat the Office simplify the processrelating to the power of attorney from anassignee such that the power of attorneydocument(s) may be filed concurrentlywith the filing of patent applicationdocuments. The comment noted that theOffice’s form (PTO/SB/96) requiresentry of specific application data whichare only available after filing of thepatent application.Response: An assignee who is theapplicant will not need to comply withthe procedure in §§ 3.71 and 3.73,including filing a § 3.73(c) statement(e.g., Form PTO/SB/96). The assigneewill only need to identify him or herselfas the applicant and submit a power ofattorney. Thus, the assignee will be ableto file the power of attorneydocument(s) concurrently with thepatent application documents eventhough he or she does not have anapplication number for the application.An assignee who did not file theapplication and thus is not the originalapplicant would need to file a § 3.73(c)statement to become the applicant andtake over prosecution of the application.See §§ 1.46(c), 3.71, and 3.73.8. Lack of Deceptive IntentComment 67: One comment expressedconcern about the deletion of the ‘‘lackof deceptive intent’’ clause. Onecomment suggested thatnotwithstanding the acknowledgementthat willful false statements arepunishable by fine or imprisonment,keeping the ‘‘without deceptiveintention’’ in the statute may be a goodidea. The comment noted that there maybe semantic differences between ‘‘false