[Federal Register Volume 77, Number 4 (Friday, January 6, 2012)]
[Proposed Rules]
[Pages 982-1003]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-33815]



[[Page 981]]

Vol. 77

Friday,

No. 4

January 6, 2012

Part V





Department of Commerce





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United States Patent and Trademark Office





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37 CFR Parts 1 and 3





Changes To Implement the Inventor's Oath or Declaration Provisions of 
the Leahy-Smith America Invents Act; Proposed Rule

  Federal Register / Vol. 77 , No. 4 / Friday, January 6, 2012 / 
Proposed Rules  

[[Page 982]]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1 and 3

[Docket No. PTO-P-2011-0074]
RIN 0651-AC68


Changes To Implement the Inventor's Oath or Declaration 
Provisions of the Leahy-Smith America Invents Act

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office) 
proposes changes to the existing rules of practice to implement the 
inventor's oath or declaration provisions of the Leahy-Smith America 
Invents Act. The Office proposes to revise and clarify the rules of 
practice relating to the inventor's oath or declaration, including 
reissue oaths or declarations, assignments containing oath or 
declaration statements from inventors, and oaths or declarations signed 
by parties other than the inventors. In order to better facilitate 
processing of patent applications, the Office further proposes to 
revise and clarify the rules of practice for power of attorney and 
prosecution of an application by an assignee.

DATES: Written comments must be received on or before March 6, 2012.

ADDRESSES: Comments should be sent be electronic mail message over the 
Internet addressed to: [email protected]. Comments may also 
be submitted by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, 
marked to the attention of Hiram H. Bernstein, Senior Legal Advisor, 
Office of Patent Legal Administration, Office of the Associate 
Commissioner for Patent Examination Policy.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (http://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message over the 
Internet because sharing comments with the public is more easily 
accomplished. Electronic comments are preferred to be submitted in 
plain text, but also may be submitted in ADOBE[supreg] portable 
document format or MICROSOFT WORD[supreg] format. Comments not 
submitted electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] portable 
document format.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, currently located in Madison East, 
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also 
will be available for viewing via the Office's Internet Web site 
(http://www.uspto.gov). Because comments will be made available for 
public inspection, information that the submitter does not desire to 
make public, such as an address or phone number, should not be included 
in the comments.

FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((571) 272-7707), 
Senior Legal Advisor, or Eugenia Jones ((571) 272-7727), Senior Legal 
Advisor, or Terry J. Maciejewski ((571) 272-7730), Technical Writer-
Editor, Office of Patent Legal Administration, Office of the Associate 
Commissioner for Patent Examination Policy.

SUPPLEMENTARY INFORMATION: The Leahy-Smith America Invents Act was 
enacted into law on September 16, 2011. See Public Law 112-29, 125 
Stat. 284 (2011). Section 4 of the Leahy-Smith America Invents Act 
amends 35 U.S.C. 115 and 118 to change the practice regarding an 
inventor's oath or declaration. Section 20 of the Leahy-Smith America 
Invents Act amends 35 U.S.C. 116, 184, 251, and 256 (and other 
statutes) to remove the ``without any deceptive intention'' provision. 
This notice proposes changes to the rules of practice to implement the 
provisions of Section 4 of the Leahy-Smith America Invents Act and the 
changes in Section 20 of the Leahy-Smith America Invents Act that 
relate to the removal of the ``without any deceptive intention'' 
language from 35 U.S.C. 116, 184, 251, and 256.
    More specifically, Section 4(a) of the Leahy-Smith America Invents 
Act amends 35 U.S.C. 115 to change the requirements for an inventor's 
oath or declaration.
    35 U.S.C. 115(a) provides that an application filed under 35 U.S.C. 
111(a) or that commences the national stage under 35 U.S.C. 371 must 
include, or be amended to include, the name of the inventor for any 
invention claimed in the application. 35 U.S.C. 115(a) also provides 
that, except as otherwise provided in 35 U.S.C. 115, each individual 
who is the inventor or a joint inventor of a claimed invention in an 
application must execute an oath or declaration in connection with the 
application.
    35 U.S.C. 115(b) provides that an oath or declaration under 35 
U.S.C. 115(a) must contain statements that the application was made or 
was authorized to be made by the affiant or declarant, and the 
individual believes himself or herself to be the original inventor or 
an original joint inventor of a claimed invention in the application. 
There is no longer a requirement in the statute that the inventor must 
state his country of citizenship and that the inventor believes himself 
or herself to be the ``first'' inventor of the subject matter (process, 
machine, manufacture, or composition of matter) sought to be patented.
    35 U.S.C. 115(c) provides that the Director may specify additional 
information relating to the inventor and to the invention that is 
required to be included in an oath or declaration under 35 U.S.C. 
115(a).
    35 U.S.C. 115(d)(1) provides that, in lieu of execution of an oath 
or declaration by an inventor under 35 U.S.C. 115(a), the applicant for 
patent may provide a substitute statement under the circumstances 
described in 35 U.S.C. 115(d)(2) and such additional circumstances as 
the Director specifies by regulation. The circumstances set forth in 35 
U.S.C. 115(d)(2) in which the applicant may provide a substitute 
statement are limited to the situations where an individual is unable 
to file the oath or declaration under 35 U.S.C. 115(a) because the 
individual is deceased, under legal incapacity, or cannot be found or 
reached after diligent effort, or an individual is under an obligation 
to assign the invention but has refused to make the oath or declaration 
required under 35 U.S.C. 115(a). Therefore, while an assignee, an 
obligated assignee, or a person who otherwise shows sufficient 
proprietary interest in the matter may make an application for patent 
as provided for in 35 U.S.C. 118, an oath or declaration (or an 
assignment containing the required statements) by each of the inventors 
is still required, except in the circumstances set forth in 35 U.S.C. 
115(d)(2) and in any additional circumstances specified by the Director 
in the regulations. The contents of a substitute statement are set 
forth in 35 U.S.C. 115(d)(3). Specifically, the substitute statement 
must identify the individual to whom the statement applies, set forth 
the circumstances for the permitted basis for filing the substitute 
statement in lieu of the oath or declaration under 35 U.S.C. 115(a), 
and contain any additional information,

[[Page 983]]

including any showing, required by the Director.
    35 U.S.C. 115(e) provides for making the statements required under 
35 U.S.C. 115(b) and (c) in an assignment of record and specifically 
permits an individual who is under an obligation of assignment of an 
application to include the required statements in the assignment 
executed by the individual, in lieu of filing the statements 
separately.
    35 U.S.C. 115(f) provides that a notice of allowance under 35 
U.S.C. 151 may be provided to an applicant only if the applicant has: 
(1) Filed each required oath or declaration under 35 U.S.C. 115(a); (2) 
filed a substitute statement under 35 U.S.C. 115(d); or (3) recorded an 
assignment meeting the requirements of 35 U.S.C. 115(e). 35 U.S.C. 
111(a)(2), however, continues to require that an application filed 
under 35 U.S.C. 111(a) include an oath or declaration as prescribed by 
35 U.S.C. 115, and 35 U.S.C. 111(a)(3) continues to permit the oath or 
declaration to be submitted after the filing date of the application, 
but within such period and under the conditions prescribed by the 
Director, including payment of a surcharge. Likewise, 35 U.S.C. 371(c) 
continues to require an oath or declaration complying with the 
requirements of 35 U.S.C. 115 for an international application to enter 
the national stage, and 35 U.S.C. 371(d) continues to require the oath 
or declaration to be submitted within the period prescribed by the 
Director, and with the payment of a surcharge if required by the 
Director and not submitted by the date of the commencement of the 
national stage. Thus, the change to 35 U.S.C. 115 does not alter the 
statutory authorization in 35 U.S.C. 111(a) and 371 for requiring the 
oath or declaration to be submitted prior to examination of the 
application, and requiring a surcharge for the submission of an oath or 
declaration after the filing date of the application under 35 U.S.C. 
111(a) or by the date of the commencement of the national stage in an 
international application entering the national stage under 35 U.S.C. 
371.
    35 U.S.C. 115(g)(1) provides that the requirements under 35 U.S.C. 
115 shall not apply to an individual named as the inventor or a joint 
inventor in an application that claims benefit under 35 U.S.C. 120, 
121, or 365(c) of an earlier-filed application, if: (1) An oath or 
declaration meeting the requirements of 35 U.S.C. 115(a) was executed 
by the individual and was filed in connection with the earlier-filed 
application; (2) a substitute statement meeting the requirements of 35 
U.S.C. 115(d) was filed in connection with the earlier-filed 
application with respect to the individual; or (3) an assignment 
meeting the requirements of 35 U.S.C. 115(e) was executed with respect 
to the earlier-filed application by the individual and was recorded in 
connection with the earlier-filed application. 35 U.S.C. 115(g)(2) 
provides that the Director may still require a copy of the executed 
oath or declaration, the substitute statement, or the assignment filed 
in connection with the earlier-filed application to be filed in the 
later-filed application.
    35 U.S.C. 115(h)(1) provides that any person making a statement 
under 35 U.S.C. 115 may withdraw, replace, or otherwise correct the 
statement at any time. 35 U.S.C. 115(h)(1) also provides that if a 
change is made in the naming of an inventor requiring the filing of one 
or more additional statements, the Director shall establish regulations 
under which such additional statements may be filed. 35 U.S.C. 
115(h)(2) provides that if an individual has executed an oath or 
declaration meeting the requirements of 35 U.S.C. 115(a) or an 
assignment meeting the requirements of 35 U.S.C. 115(e), then the 
Director cannot require that individual to subsequently make any 
additional oath, declaration, or other equivalent statement in 
connection with the application or any patent issuing thereon. 35 
U.S.C. 115(h)(3) provides that a patent shall not be invalid or 
unenforceable based upon the failure to comply with a requirement under 
this section if the failure is remedied as provided under 35 U.S.C. 
115(h)(1).
    35 U.S.C. 115(i) provides that any declaration or statement filed 
pursuant to 35 U.S.C. 115 must contain an acknowledgement that any 
willful false statement made in the declaration or statement is 
punishable under 18 U.S.C. 1001 by fine or imprisonment of not more 
than 5 years, or both. This is similar to the provision in current 37 
CFR 1.68.
    Section 4(a)(2) of the Leahy-Smith America Invents Act amends 35 
U.S.C. 121 to eliminate the sentence that provided for the Director to 
dispense with the signing and execution of an oath or declaration or 
equivalent statement by the inventor in a divisional application when 
the divisional application is directed solely to subject matter 
described and claimed in the original application as filed. This 
amendment to 35 U.S.C. 121 is consistent with 35 U.S.C. 115(g)(1) 
because the inventor named in a divisional application would not need 
to execute an oath or declaration or equivalent statement for the 
divisional application regardless of whether the divisional application 
is directed solely to subject matter described and claimed in the 
original application.
    Section 4(a)(3) of the Leahy-Smith America Invents Act amends 35 
U.S.C. 111(a) to insert ``or declaration'' after ``and oath.''
    Section 4(b)(1) of the Leahy-Smith America Invents Act amends 35 
U.S.C. 118 to change the practice regarding the filing of an 
application by a person other than the inventor. First, 35 U.S.C. 118 
is amended to provide that a person to whom the inventor has assigned 
or is under an obligation to assign the invention may make an 
application for patent. Second, 35 U.S.C. 118 is amended to provide 
that a person who otherwise shows sufficient proprietary interest in 
the matter may make an application for patent on behalf of, and as 
agent for, the inventor on proof of the pertinent facts and a showing 
that such action is appropriate to preserve the rights of the parties. 
Finally, 35 U.S.C. 118 is amended to provide that if a patent is 
granted on an application filed under 35 U.S.C. 118, the patent shall 
be granted to the real party in interest. Under amended 35 U.S.C. 118, 
the Director may continue to provide whatever notice to the inventor 
that the Director considers to be sufficient.
    The changes to 35 U.S.C. 115 and 118 do not mean that a person to 
whom the inventor has assigned or is under an obligation to assign the 
invention may make an application for patent in all circumstances. They 
do, however, recognize that an assignee or a person to whom the 
inventor is obligated to assign can execute the oath or declaration. In 
those circumstances set forth in 35 U.S.C. 115(d)(2), an assignee or 
person to whom the inventor is under an obligation to assign, or a 
legal representative of the dead or legally incapacitated inventor, is 
the applicant as is currently set forth in 37 CFR 1.41(b).
    Section 4(b)(2) of the Leahy-Smith America Invents Act includes a 
conforming amendment to 35 U.S.C. 251 to provide for the filing of a 
reissue application by an assignee of the entire interest if the 
application for the original patent was filed by the assignee of the 
entire interest.
    Section 4(c) of the Leahy-Smith America Invents Act amends 35 
U.S.C. 112 to change, inter alia, the undesignated paragraphs to 
subsections. Section 4(d) makes conforming amendments to 35 U.S.C. 
111(b) to make reference to the subsections of 35 U.S.C. 112.
    Section 4(e) of the Leahy-Smith America Invents Act provides that 
the amendments made by Section 4 shall take effect on September 16, 
2012, and

[[Page 984]]

shall apply to any patent application filed on or after September 16, 
2012.
    Section 20 of the Leahy-Smith America Invents Act amends 35 U.S.C. 
116, 184, 251, and 256 to eliminate the ``without any deceptive 
intention'' clauses from each portion of the statute. This change 
should not be taken as an endorsement for applicants and inventors to 
act with ``deceptive intention'' in proceedings before the Office. As 
discussed previously, 35 U.S.C. 115(i) requires that any declaration or 
statement filed pursuant to 35 U.S.C. 115 must contain an 
acknowledgement that any willful false statement made in the 
declaration or statement is punishable under 18 U.S.C. 1001 by fine or 
imprisonment of not more than 5 years, or both.
    Section 20(l) of the Leahy-Smith America Invents Act provides that 
the amendments made by Section 20 shall take effect on September 16, 
2012, and shall apply to proceedings commenced on or after September 
16, 2012.
    General discussion regarding implementation: 35 U.S.C. 115 as 
amended permits the required inventor statements to be made in an oath 
or declaration under 35 U.S.C. 115(a), a substitute statement under 35 
U.S.C. 115(d), or an assignment under 35 U.S.C. 115(e). Since 35 U.S.C. 
115 no longer contains a requirement that the inventor identify his 
country of citizenship, the Office will no longer require this 
information in the oath or declaration. The other requirements for 
oaths or declarations currently provided in 37 CFR 1.63 would be 
retained.
    In view of 35 U.S.C. 115(d), the Office is proposing to permit an 
assignee, a party to whom the inventor is legally obligated to assign 
the invention, and a party who otherwise has a sufficient proprietary 
interest to provide a substitute statement with respect to an inventor 
who is deceased, is legally incapacitated, cannot be found or reached 
after diligent effort, or refuses to sign the oath or declaration, even 
when there are other inventors who are signing the oath, declaration, 
or assignment with the required statements. This would provide an 
alternative to the current procedure in which a legal representative 
(e.g., executor, administrator, guardian, or conservator) must sign the 
oath or declaration for a deceased or legally incapacitated inventor, 
and, if joint inventors are signing the oath or declaration, the joint 
inventors must sign the oath or declaration on behalf of an inventor 
who cannot be found or reached after diligent effort or who refuses to 
sign the oath or declaration.
    In view of 35 U.S.C. 115(e), the Office will permit inventors to 
make the required statements in an assignment executed by the inventor 
and recorded in the Office. When the inventors choose to do so, the 
Office is proposing to require that the assignment cover sheet identify 
such an assignment as also being an oath or declaration. 35 U.S.C. 
111(a)(2)(C) provides that the application ``shall include an oath or 
declaration as prescribed by section 115 of this title.'' Therefore, 
the Office is proposing to require that a copy of any recorded 
assignment submitted pursuant to 35 U.S.C. 115(e) as the inventor oath 
or declaration be filed in the application, rather than merely making 
reference to its recording in regard to the application.
    Under 35 U.S.C. 115(f), the Office is permitted to delay requiring 
an oath or declaration until an application is in condition for 
allowance. The Office considered this option, but considers it better 
for the examination process and patent pendency to continue to require 
the oath or declaration during pre-examination.
    The Office needs to know who the inventors are to prepare patent 
application publications and publish applications at eighteen months 
from their earliest filing date. The Office also needs to know who the 
inventors are to conduct examination (under conditions of patentability 
in effect today as well as in effect under the Leahy-Smith America 
Invents Act). For instance, the Office must know the identity of the 
inventors to determine what prior art may be applied against the 
claimed invention or whether to issue a double patenting rejection. The 
inventorship in an application is not set until an oath or declaration 
is filed. See 37 CFR 1.41(a)(1) (the inventorship of a nonprovisional 
application is that inventorship set forth in the oath or declaration 
as prescribed by 37 CFR 1.63, with certain exceptions).
    In addition, delaying the requirement for an oath or declaration 
until allowance would also significantly add to overall patent 
pendency. The current practice for completing applications (i.e., 
obtaining any outstanding oath or declaration and filing fees) does not 
have a noticeable effect on patent pendency because it takes place 
during pre-examination when the application would otherwise be awaiting 
a first Office action by the examiner and applications are placed in 
the queue for examination by filing date order regardless of the date 
on which they are completed. No Technology Center (other than designs) 
had average first action pendency lower than twenty months to first 
action at the end of fiscal year 2011. See United States Patent and 
Trademark Office Performance and Accountability Report Fiscal Year 
2011, at 162 (table 4) (2011). Thus, the current practice of completing 
applications during pre-examination avoids any noticeable impact on 
first action pendency and overall pendency. Stated differently, 
forwarding applications for examination without an oath or declaration 
would not change the first action pendency either under current first 
action pendency or when the Office reaches a ten-month first action.
    Changing the practice of completing applications during pre-
examination such that an oath or declaration is not required until an 
application is otherwise in condition for allowance would require the 
Office to issue some type of action (e.g., an action under Ex parte 
Quayle, 1935 Dec. Comm'r Pat. 11 (1935)) to obtain an oath or 
declaration before the Office is able to issue a notice of allowance 
under 35 U.S.C. 151. This would require an extra action during the 
examination process in any application in which an oath or declaration 
is not present before examination. About 33 percent of applications do 
not contain an oath or declaration on filing. In addition, based upon 
data for fiscal year 2011 in the Patent Application Location and 
Monitoring (PALM) database system, the average time taken for 
applicants to reply to an Ex parte Quayle action was 52 days, and the 
average time taken by examiners to respond to an applicant's reply to 
an Ex parte Quayle action was 32 days. Thus, a change in practice to 
permit an oath or declaration to be filed after the Office is ready to 
mail a notice of allowance could increase the total pendency for 
allowed applications by between one and three months (depending upon 
whether only 33 percent of applicants or all applicants delayed 
submission of an oath or declaration). This is also why identification 
of the inventor(s) in the application itself to be followed after the 
notice of allowance with the oath or declaration is insufficient.
    The approach that will allow for an efficient publication and 
examination process while minimizing the impact on patent pendency is 
for an application to be completed prior to examination. Assignees 
should consider getting the oath or declaration and any assignment 
document executed concurrently or in the common declaration-assignment 
document provided for in 35 U.S.C. 115(e) before filing an application. 
The Office also plans to streamline its practices to permit an assignee 
or an obligated assignee to readily execute an oath or declaration, or 
a person who

[[Page 985]]

otherwise shows sufficient proprietary interest to be able to readily 
execute an oath or declaration on behalf of an inventor, when such 
inventor is not able, willing, or available to execute the oath or 
declaration. Finally, for those few applicants who actually need more 
time than is permitted for completing applications during pre-
examination, the Office has practices that would permit an extended 
period for completing an application (Pilot Program for Extended Time 
Period To Reply to a Notice To File Missing Parts of Nonprovisional 
Application, 75 FR 76401 (Dec. 8, 2010)), and will be proposing other 
ways to permit applicants to have additional time to complete an 
application for examination (see Track III of the Enhanced Examination 
Timing Control Initiative, 75 FR 31763 (June 4, 2010)).
    The Office also considered discontinuing the practice of charging a 
surcharge for an application in which the oath or declaration is not 
present on filing. Applications that are not complete on filing (e.g., 
are filed without an oath or declaration, or without the filing fee) 
require special processing on the part of the Office. The Office 
appreciates that some applications need to be filed to avoid a loss of 
rights before all of the formal documents or fees are ready, but the 
Office thinks that the cost of the special processing required for such 
applications should be borne by those applicants who require special 
processing and not by applicants whose applications are complete on 
filing.
    Consistent with 35 U.S.C. 115(g), the Office will permit applicants 
who executed an oath or declaration in a prior application, where 
appropriate, to use a copy of that oath or declaration in all 
continuing applications, including continuation-in-part applications, 
with the caveat that any added inventors in the continuing application 
must execute an original oath or declaration.
    While the Office recognizes the ability of any person making a 
statement under 35 U.S.C. 115 to correct the statement at any time, 
including after issuance of the patent, as provided in 35 U.S.C. 
115(h), the Office will not review the submission of such a document if 
it is not timely presented during prosecution of the application, 
except where there is a correction of inventorship in a patent made 
pursuant to 35 U.S.C. 256 and 37 CFR 1.324.
    Consistent with the amendments made to 35 U.S.C. 115 and 251, the 
Office proposes changes to reissue practice to: (1) Delete the 
requirement for a reissue oath or declaration to include a statement 
that all errors arose without any deceptive intent on the part of the 
applicant; (2) eliminate the requirement for a supplemental oath or 
declaration when a claim is amended, and require a corrected oath or 
declaration only where all errors previously identified in the reissue 
oath or declaration are no longer being relied upon as the basis for 
reissue; (3) require applicants to specifically identify any broadening 
of a patent claim, rather than merely provide an alternative statement 
that applicant is correcting an error of either claiming more or less 
than a patentee was entitled to claim; and (4) clarify that a single 
claim containing both a broadening and a narrowing of the claimed 
invention is to be treated as a broadening. These changes will provide 
for more efficient processing of reissue applications and improve the 
quality of patents, in accordance with the intent of the Leahy-Smith 
America Invents Act. In order to implement the conforming amendment 
made to 35 U.S.C. 251 in Section 4(b)(2) of the Leahy-Smith America 
Invents Act, the Office is also proposing to amend the rules to permit 
an assignee of the entire interest who filed an application under 35 
U.S.C. 118 that was patented to sign the reissue oath or declaration in 
a reissue application of such patent (even if the reissue application 
is a broadening reissue).
    Where the Director grants a patent on an application filed under 
amended 35 U.S.C. 118 by a person other than the inventor, the Office 
must grant the patent to the real party in interest. Therefore, the 
Office proposes to require applicants other than the inventor to notify 
the Office of any change in ownership of the application no later than 
payment of the issue fee. Absent any such notification, the Office will 
presume no change in ownership of the application has occurred.
    The Office, under the authority provided by 35 U.S.C. 2(b)(2), also 
proposes changes to the rules of practice for power of attorney, 
prosecution of an application by an assignee, and foreign priority 
claims to facilitate prosecution of applications and improve the 
quality of patents. Juristic entities who seek to take over prosecution 
of an application will need to do so via a registered practitioner. 
Juristic entity includes entities such as corporations or other non-
human entities created by law and given certain legal rights. This 
practice is consistent with the general rule in Federal courts that a 
juristic entity must be represented by counsel admitted to practice 
before the court. See, e.g., Osborn v. Bank of United States, 22 U.S. 
(9 Wheat.) 738, 830 (1824) (a corporation can appear in court only by 
attorney); Richdel, Inc. v. Sunspool Corp., 699 F.2d 1366 
(Fed.Cir.1983) (corporation must be represented in court by an 
attorney); Southwest Express Co., Inc. v. Interstate Commerce 
Commission, 670 F.2d 53, (5th Cir. 1982) (a corporation or partnership 
must be represented in court by an attorney). The Office's experience 
is that the vast majority of juristic entities act via a registered 
practitioner, but a small number attempt to prosecute applications 
``pro se.''
    Other proposed changes include: providing for the carryover of a 
power of attorney in continuation and divisional applications, and in 
continuation-in-part applications where the inventorship is the same as 
in the immediate prior application; permitting practitioners who have 
acted only in a representative capacity in an application to change the 
correspondence address after a patent has issued; accepting the 
signature of a practitioner of record on a statement under 37 CFR 
3.73(b) on behalf of an assignee without requiring further evidence of 
the practitioner's authority to act on behalf of the assignee; 
providing a procedure for handling conflicts between different 
purported assignees attempting to control prosecution; and harmonizing 
the practice regarding foreign priority claims with the practice 
regarding domestic benefit claims by requiring both types of claims to 
be set forth in an application data sheet.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.1: Section 1.1(e) is proposed to be amended to update the 
mail stop designation for communications relating to patent term 
extensions under 35 U.S.C. 156 to make it consistent with the Office's 
list of mail stops. Mail stops assist the Office in routing 
correspondence to the office or area assigned with treating it. Use of 
mail stops is not required but is strongly recommended, even where the 
documents are submitted via the Office's electronic filing system-Web 
(EFS-Web). A mail stop designation can help the Office more quickly 
identify the type of document where applicant did not select the 
correct document code when uploading a document through EFS-Web. For 
this reason, use of mail stops is encouraged.
    Applicants are reminded that initial requests for patent term 
extension may not be submitted via EFS-Web and must be filed in paper. 
These initial requests are handled differently by Office

[[Page 986]]

personnel than other types of official patent correspondence. 
Therefore, the use of a mail stop will help ensure that initial 
requests are properly recognized and processed in a timely manner.
    Section 1.4: Section 1.4(e) is proposed to be amended to require 
that a payment by credit card in patent cases may only be submitted 
with an original handwritten signature personally signed in permanent 
dark ink or its equivalent. This change is proposed to avoid possible 
controversies regarding use of an S-signature (Sec.  1.4(d)(2)) instead 
of a handwritten signature (Sec.  1.4(d)(1)) for credit card payments, 
e.g., a request for refund where there is a change of purpose by the 
applicant and the request is based on use of an S-signature rather than 
a handwritten signature.
    Section 1.31: Section 1.31 is proposed to be amended to create 
paragraphs (a) and (b). Section 1.31(a) would retain the subject matter 
of the first sentence of current Sec.  1.31 with the second sentence of 
current Sec.  1.31 being placed in paragraph (b). Section 1.31(a) is 
proposed to be amended, under the authority provided by 35 U.S.C. 
2(b)(2), to include a provision that a juristic entity must be 
represented by a patent practitioner. An additional clarification is 
provided that prosecution by a juristic entity is governed by Sec.  
3.71(a), and the taking of action by an assignee is governed by Sec.  
3.73. See also the discussion of Sec.  1.33(f).
    Section 1.32: Section 1.32(d) is proposed to be added to address 
the filing in a continuing application of powers of attorney from the 
parent application. Proposed Sec.  1.32(d) provides that a power of 
attorney from a prior application for which benefit is claimed under 35 
U.S.C. 120, 121, or 365(c) in a continuing application may have effect 
in the continuing application if the inventorship of the continuing 
application is the same as the prior application or one or more 
inventors from the prior application has been deleted in the continuing 
application, and if a copy of the power of attorney from the prior 
application is filed in the continuing application. Current Sec.  
1.63(d)(4) (proposed to be deleted in this notice) provides that, when 
filing continuation and divisional applications and including a copy of 
a declaration from the parent application, applicants should 
``identify'' in the continuation or divisional any change in power of 
attorney that occurred after the filing of the parent application. The 
requirement in Sec.  1.63(d)(4) to ``identify'' the change in power of 
attorney has been interpreted differently by applicants causing 
confusion for the Office as to who has the power of attorney. For 
example, some applicants have filed a copy of the power of attorney 
from the parent, while others have filed a copy of only the notice of 
acceptance of power of attorney or just made a statement about the 
power of attorney in a transmittal letter that accompanied the 
continuation or divisional application. Because of these past 
inconsistencies in ``identifying'' a change in power of attorney, 
specifically requiring a copy of the power of attorney from the prior 
application to be filed in the continuing application (even where a 
change in power did not occur in the prior application) will make the 
record clear with respect to who has power of attorney.
    The Office does not recommend that practitioners use a combined 
declaration and power of attorney document and no longer provides a 
combined declaration and power of attorney form on its Internet Web 
site. The power of attorney should be from the assignee where one 
exists. Otherwise, the assignee may be paying the bill, while the 
inventor is providing the power of attorney, thereby possibly raising 
an issue as to who is the practitioner's client. Additionally, 
relationships between an assignee and the inventors may deteriorate. It 
is not uncommon in these situations for inventors to stop cooperating, 
and in some cases, file powers of attorney in an attempt to control 
prosecution of the application.
    Section 1.32(e) is proposed to be added to clarify that, where a 
power of attorney has been granted by all of the inventors (as opposed 
to the assignee), the addition of an inventor pursuant to a request 
granted under Sec.  1.48 results in the loss of that power of attorney 
unless the added inventor provides a power of attorney consistent with 
the existing power of attorney from the other inventors. This provision 
does not preclude a practitioner from acting pursuant to Sec.  1.34, if 
applicable.
    A power of attorney is a written document by which a principal 
(i.e., the applicant for patent or assignee of entire interest) 
authorizes one or more patent practitioners or joint inventors to act 
on his or her behalf. See Sec.  1.32(a). Where a power of attorney from 
the inventors is already present in the application file, and a request 
is filed to add one or more inventors pursuant to Sec.  1.48, the grant 
of the Sec.  1.48 request results in the power of attorney of record 
being signed by less than all of the inventors. The Manual of Patent 
Examining Procedure specifies that papers giving a power of attorney in 
an application will not be accepted when signed by less than all of the 
inventors unless accompanied by a petition under Sec.  1.183 and fee 
under Sec.  1.17(f) demonstrating the extraordinary situation where 
justice requires the waiver of the requirement in Sec.  1.32(b)(4) that 
all of the inventors sign the power of attorney. See Manual of Patent 
Examining Procedure (MPEP) Sec.  402.10 (8th ed. 2001) (Rev. 8, July 
2010). Because the inventive entity changes upon grant of the Sec.  
1.48 request, the power of attorney of record can no longer be 
effective in the application.
    It should be noted that a practitioner may only act in a 
representative capacity on behalf of all of the applicants or owners of 
a patent application, unless a petition is granted in accordance with 
MPEP Sec.  402.10. Section 1.34 does not authorize a practitioner to 
take action in a patent application where he or she has authority or a 
power of attorney from less than all of the inventors or owners, and is 
not provided as a means to subvert the petition requirements set forth 
in MPEP Sec.  402.10. Where a power of attorney was already of record 
in the file prior to the filing and grant of the Sec.  1.48 request, 
and the practitioner cannot secure a power of attorney from each added 
inventor, the procedures set forth in MPEP Sec.  402.10 must be 
followed, unless a power of attorney from the assignee of the entire 
right, title, and interest, or from partial assignees who collectively 
make up the entire right, title, and interest (after ownership is 
established pursuant to Sec.  3.71) is filed.
    Section 1.33: Section 1.33(a) is proposed to be amended to specify 
that if an applicant provides more than one correspondence address in a 
single paper or in multiple papers submitted on one day, the Office 
will select one of the specified addresses for use as the 
correspondence address and, if given, may select the correspondence 
address associated with a Customer Number over a typed correspondence 
address. This proposal addresses the problem that arises when 
applicants provide multiple correspondence addresses in a single paper 
(e.g., providing both a typed correspondence address and a Customer 
Number in a single paper) or multiple papers (e.g., an oath or 
declaration, a transmittal letter, and a preliminary amendment that 
each includes a different correspondence address) on one day, and the 
Office inadvertently did not select the correspondence address actually 
desired by applicant. The Office may then need to re-mail papers to the 
desired address. This proposed change does not affect the hierarchy 
provided in Sec.  1.76(d) for inconsistencies between an application 
data sheet and other documents. The

[[Page 987]]

proposed change is intended to encourage applicants to carefully review 
their submissions to ensure that the Office receives clear instructions 
regarding the correspondence address.
    Section 1.33(b)(3) is proposed to be removed and reserved in view 
of changes proposed in Sec.  1.33(f), which provides that a juristic 
entity may prosecute a patent application only through a patent 
practitioner. See the discussion of proposed Sec.  1.33(f), below.
    Section 1.33 is proposed to be amended to add a new Sec.  1.33(f) 
to provide that an assignee may only conduct prosecution of an 
application in accordance with Sec. Sec.  1.31 and 3.71. Thus, all 
papers submitted on behalf of a juristic entity must be signed by a 
patent practitioner. This change is proposed because juristic entities 
have been attempting to prosecute patent applications before the Office 
pro se and consequently requesting additional assistance from the 
examiner. Juristic entities attempting to prosecute patent applications 
before the Office pro se also make more procedural errors that result 
in delays in prosecution. Accordingly, this proposal will facilitate a 
reduction in the Office backlog by reducing the delays.
    Section 1.33 is proposed to be amended to add a new Sec.  1.33(g) 
to replace Sec.  1.63(d)(4) with respect to the correspondence address. 
Where application papers from a prior application are used in a 
continuing application and the correspondence address was changed 
during the prosecution of the prior application, an application data 
sheet or separate paper identifying the updated correspondence address 
to be used for the continuing application must be submitted. Otherwise, 
the Office may not recognize the change of correspondence address 
effected during the prosecution of the prior application. Where copies 
of submitted papers, e.g., an oath or declaration, contain an outdated 
address (that was changed during prosecution of the prior application), 
an application data sheet or separate paper identifying the updated 
correspondence address to be used must be submitted. Presently, some 
applicants file continuing applications with copies of papers from the 
prior application that include correspondence addresses to former law 
firms or that are no longer current. The proposal would facilitate the 
processing of patent applications by the Office by making it easier to 
determine the correct correspondence address and reduce the number of 
instances where the Office mails correspondence to an incorrect 
address.
    Section 1.33 is proposed to be amended to add a new Sec.  1.33(h) 
to provide that a practitioner acting in a representative capacity in 
an application may change the correspondence address after the patent 
has issued, provided that the change of correspondence address is 
accompanied by a statement that notice has been given to the applicant 
or owner. Proposed Sec.  1.33(h) is intended to provide a means for 
practitioners acting in a representative capacity in an application to 
effect a change in correspondence address after the patent has granted 
but would not provide authority to a practitioner acting under Sec.  
1.34 to change the correspondence address in an application after a 
Sec.  1.63 oath or declaration by any of the inventors has been filed. 
See Sec.  1.33(a)(2).
    Practitioners that file and prosecute an application in a 
representative capacity, pursuant to Sec.  1.34, usually provide their 
business address as the correspondence address of record. Once the 
patent issues, some practitioners attempt to withdraw as attorney or 
agent by filing a petition, and also attempt to change the 
correspondence address to direct correspondence to the applicant's or 
owner's address. Such attempts are not successful as the current rules 
do not permit the correspondence address to be changed by a 
practitioner acting in a representative capacity, nor will the Office 
grant withdrawal where a practitioner is not of record. See Change in 
Procedure for Requests to Withdraw from Representation In a Patent 
Application, 1329 Off. Gaz. Pat. Office 99 (Apr. 8, 2008). There have 
been instances where practitioners acting in a representative capacity 
have indicated that they have repeatedly requested that the client 
change the correspondence address, but the client has refused to submit 
the change of correspondence address to the Office. Proposed Sec.  
1.33(h) would permit practitioners to change the correspondence address 
after a patent has issued where practitioners have provided notice to 
the applicants or owners.
    Section 1.41: Section 1.41(a)(3) is proposed to be amended to 
delete the language regarding provision of the citizenship of each 
person believed to be an inventor when the application papers for a 
nonprovisional application are filed without an oath or declaration as 
prescribed by Sec.  1.63, or when application papers for a provisional 
application are filed without a cover sheet as prescribed by Sec.  
1.51(c)(1). Thus, only the name and residence of each person believed 
to be an inventor should be provided when nonprovisional application 
papers are filed without an oath or declaration or provisional 
application papers are filed without a cover sheet.
    Section 1.41(a)(4) is proposed to be amended to simplify correction 
of inventorship in a national stage application under 35 U.S.C. 371. 
Under the current provision of Sec.  1.41(a)(4), to correct 
inventorship, applicants must either: (1) File an oath or declaration 
executed by the inventors identified in the international phase and 
then follow the procedures under Sec.  1.48(b) or (c) to correct 
inventorship due to claim amendments; or (2) file a request to correct 
inventorship under Sec.  1.497(d), where inventorship was erroneously 
identified in the international phase. The proposed amendment to Sec.  
1.41(a)(4) treats national stage applications as analogous to 
applications filed under 35 U.S.C. 111(a) in that the first submission 
of an executed oath or declaration acts to correct the earlier 
identification of inventorship. See current Sec.  1.48(f)(1).
    Section 1.41(c) is proposed to be amended to differentiate between 
the mere delivery of a patent application and other correspondence to 
the Office and the signing of official correspondence. Proposed Sec.  
1.41(c) would provide that any person may physically or electronically 
deliver an application for patent and related correspondence, including 
fees, to the Office on behalf of the inventor(s), except that an oath 
or declaration (Sec.  1.63) can only be made in accordance with Sec.  
1.64. Proposed Sec.  1.41(c) would also provide that amendments and 
other papers must be signed in accordance with Sec.  1.33(b). This is 
consistent with the language of current Sec.  1.33(b).
    Section 1.42: Section 1.42 is proposed to be amended to set forth 
the procedures for satisfying the oath or declaration provisions of 35 
U.S.C. 115 for deceased and legally incapacitated inventors in 
paragraphs (a) through (c). Current Sec.  1.42 provides that in the 
case of the death of an inventor, the legal representative (e.g., 
executor, administrator, etc.) of the deceased inventor may make the 
necessary oath or declaration, and apply for and obtain the patent. 
Current Sec.  1.43 provides that in the case of an inventor who is 
legally incapacitated, the legal representative (e.g., guardian, 
conservator, etc.) of the legally incapacitated inventor may make the 
necessary oath or declaration, and apply for and obtain the patent. 35 
U.S.C. 115(d) sets forth the permitted circumstances in which the 
applicant for patent may provide a substitute statement in lieu of 
executing an oath or declaration under 35 U.S.C. 115(a). Specifically, 
the permitted

[[Page 988]]

circumstances in which a substitute statement may be made with respect 
to an individual include: (1) Where the individual is deceased; (2) 
where the individual is legally incapacitated; (3) where the individual 
cannot be found or reached after diligent effort; or (4) where the 
individual is under an obligation to assign the invention but has 
refused to make the oath or declaration required under 35 U.S.C. 
115(a). Proposed Sec.  1.42 would cover the first two permitted 
circumstances, while proposed Sec.  1.47 would cover the last two 
permitted circumstances. It is noted that 35 U.S.C. 115(d) also gives 
the Director the authority to specify additional circumstances by 
regulation.
    Amended 35 U.S.C. 118 provides for a person to whom the inventor 
has assigned or is under an obligation to assign the invention to make 
an application for patent, and for a person who otherwise shows 
sufficient proprietary interest in the matter to make an application 
for patent on behalf of, and as agent for, the inventor on proof of the 
pertinent facts and a showing that such action is appropriate to 
preserve the rights of the parties. Accordingly, the Office is 
proposing amendments to Sec.  1.42 to provide for the ability of the 
assignee, a party to whom the inventor is under an obligation to assign 
the invention, or a party who otherwise shows sufficient proprietary 
interest to execute the oath or declaration under Sec.  1.63 in the 
case of a deceased or legally incapacitated inventor, in addition to 
the legal representative of such an inventor. This oath or declaration, 
together with any necessary showing, constitutes the substitute 
statement provided for in 35 U.S.C. 115(d). The Office is interpreting 
the term ``person'' as used in 35 U.S.C. 118 as including juristic 
persons.
    Proposed Sec.  1.42(a) provides that in the case of the death or 
legal incapacity of the inventor, the legal representative (e.g., 
executor, administrator, guardian, or conservator) of the deceased or 
incapacitated inventor, the assignee, a party to whom the inventor is 
under an obligation to assign the invention or a party who otherwise 
shows sufficient proprietary interest in the matter may execute the 
oath or declaration under Sec.  1.63. Proposed Sec.  1.42(a) further 
provides that the oath or declaration must comply with Sec. Sec.  
1.63(a) and (b) and identify the inventor who is deceased or legally 
incapacitated. Proposed Sec.  1.42(a) further provides that a party who 
shows sufficient proprietary interest in the matter executes the oath 
or declaration on behalf of the deceased or incapacitated inventor.
    Proposed Sec.  1.42(b) provides that a party to whom the inventor 
is under an obligation to assign the invention or a party who otherwise 
has sufficient proprietary interest in the matter who is taking action 
under Sec.  1.42 must file a petition, accompanied by the fee set forth 
in Sec.  1.17(g) and a showing, including proof of pertinent facts, 
either that: (1) The deceased or incapacitated inventor is under an 
obligation to assign the invention to the party; or (2) the party has 
sufficient proprietary interest in the matter to execute the oath or 
declaration on behalf of the deceased or incapacitated inventor and 
that such action is necessary to preserve the rights of the parties. 
Legal representatives of deceased or incapacitated inventors would be 
able to execute the oath or declaration for such an inventor without 
the need for a petition, consistent with the practice under current 
Sec. Sec.  1.42 and 1.43. In addition, assignees would now be able to 
execute the oath or declaration for a deceased or incapacitated 
inventor without the need for a petition. However, a party to whom the 
inventor is under an obligation to assign or a party who otherwise has 
sufficient proprietary interest would need to file a petition as set 
forth in proposed Sec.  1.42(b) in order to execute the oath or 
declaration for a deceased or incapacitated inventor. The proof 
required would be similar to the current proof required when an 
assignee, a party to whom an inventor has agreed in writing to assign 
the invention, or a party who otherwise shows sufficient proprietary 
interest in the matter files a petition under current Sec.  1.47(b). 
The proof required to show proprietary interest and to show that the 
action is necessary to preserve the rights of the parties in a petition 
under current Sec.  1.47(b) is discussed in MPEP Sec. Sec.  409.03(f) 
and (g). The language ``or to prevent irreparable damage'' contained in 
current Sec.  1.47(b) has not been included in proposed Sec.  1.42(b) 
because 35 U.S.C. 118, as amended by the Leahy-Smith America Invents 
Act, does not contain this language.
    Proposed Sec.  1.42(c) contains language similar to current Sec.  
1.42 (second sentence) with the addition of the term ``assignee'' and 
the limitation that the intervention must be ``pursuant to this 
section.'' Thus, where an inventor dies during the time intervening 
between the filing of the application and the granting of a patent 
thereon, the letters patent may be issued to the legal representative 
or the assignee upon proper intervention under Sec.  1.42.
    Section 1.43: Section 1.43 is proposed to be removed and reserved. 
The provisions relating to inventors who are legally incapacitated are 
proposed to be moved to Sec.  1.42 and revised as discussed above.
    Section 1.47: Section 1.47 is proposed to be amended to revise the 
procedures for when an inventor refuses to sign the oath or declaration 
or cannot be reached after diligent effort to sign the oath or 
declaration. Current Sec.  1.47(a) provides a petition procedure for 
when an inventor refuses to sign the oath or declaration or cannot be 
reached after diligent effort, which requires each of the available 
inventors to sign the oath or declaration on behalf of himself or 
herself and the nonsigning inventor, a petition including proof of the 
pertinent facts, the petition fee in Sec.  1.17(g), and the last known 
address of the nonsigning inventor. Current Sec.  1.47(b) provides a 
petition procedure for when all inventors are refusing to sign the oath 
or declaration or cannot be reached after diligent effort and thus no 
inventors are available to sign the oath or declaration. In this 
situation, current Sec.  1.47(b) permits a person to whom the inventor 
has assigned or agreed in writing to assign the invention, or who 
otherwise shows sufficient proprietary interest in the matter, to sign 
the oath or declaration on behalf of and as agent for all the 
inventors. Current Sec.  1.47(b) requires a petition including proof of 
pertinent facts, a showing that such action is necessary to preserve 
the rights of the parties or to prevent irreparable damage, the 
petition fee set forth in Sec.  1.17(g), and the last known address of 
all inventors. Thus, under the current rule, the assignee, a party to 
whom the inventor has agreed in writing to assign the invention, or a 
party who otherwise shows sufficient proprietary interest in the matter 
can only sign the oath or declaration for a nonsigning inventor under 
Sec.  1.47(b), when there are no inventors available to sign the oath 
or declaration.
    Proposed Sec.  1.47(a) provides that if an inventor or a legal 
representative of a deceased or incapacitated inventor refuses to 
execute the oath or declaration, or cannot after diligent effort be 
found or reached to execute the oath or declaration, then the assignee 
of the nonsigning inventor, a party to whom the inventor is obligated 
to assign the invention, or a party who otherwise shows sufficient 
proprietary interest may execute the oath or declaration. Proposed 
Sec.  1.47(a) further provides that a party who shows sufficient 
interest in the matter executes the oath or declaration on behalf of 
the nonsigning inventor. This expands the situations in which an 
assignee, a party to whom the inventor is obligated to assign, or a 
party who otherwise shows sufficient

[[Page 989]]

proprietary interest can execute the oath or declaration beyond what is 
permitted in current Sec.  1.47(b). Thus, even if other inventors are 
signing the oath or declaration, the assignee of the nonsigning 
inventor, a party to whom the inventor is obligated to assign, or a 
party who otherwise shows sufficient proprietary interest would be able 
to execute the oath or declaration for the nonsigning inventor, 
accompanied by the petition under proposed Sec.  1.47(a).
    Proposed Sec.  1.47(b) provides that if a joint inventor or legal 
representative of a deceased or incapacitated joint inventor refuses to 
execute the oath or declaration, or cannot be found or reached after 
diligent effort, the remaining inventor(s) may execute the oath or 
declaration on behalf of himself or herself and the nonsigning 
inventor. This is similar to the practice in current Sec.  1.47(a) 
where the available inventor(s) can execute the oath or declaration on 
behalf of himself of herself and the nonsigning inventor. Current Sec.  
1.47(a) and (b) also apply to nonsigning legal representatives, 
although not expressly stated in the rule. Proposed Sec.  1.47(a) and 
(b) make it explicit in the rule that the provisions apply to 
nonsigning legal representatives of deceased or incapacitated 
inventors.
    Proposed Sec.  1.47(c) provides that any oath or declaration 
executed pursuant to Sec.  1.47 must comply with the requirements of 
Sec.  1.63(a) and (b) and be accompanied by a petition that: (1) 
Includes the petition fee set forth in Sec.  1.17(g); (2) identifies 
the nonsigning inventor, and includes the last known address of the 
nonsigning inventor; and (3) states either that the inventor or legal 
representative cannot be reached after a diligent effort was made, or 
has refused to execute the oath or declaration when presented with a 
copy of the application papers, with proof of the pertinent facts. The 
proof required to show that the inventor refuses to execute the oath or 
declaration, or cannot be found or reached after diligent effort, is 
the same level of proof currently required for Sec.  1.47 petitions and 
is discussed in MPEP Sec.  409.03(d).
    In addition, proposed Sec.  1.47(c)(4) requires a party to whom the 
nonsigning inventor is under an obligation to assign the invention, or 
a party who has sufficient proprietary interest in the matter acting 
under Sec.  1.47(a) to also provide a showing, including proof of the 
pertinent facts, either that: (1) The nonsigning inventor is under an 
obligation to assign the invention to the party; or (2) the party has 
sufficient proprietary interest in the matter to execute the oath or 
declaration on behalf of the nonsigning inventor and that such action 
is necessary to preserve the rights of the parties. The proof required 
would be similar to the current proof required when an assignee, a 
party to whom an inventor has agreed in writing to assign the 
invention, or a party who otherwise shows sufficient proprietary 
interest in the matter files a petition under current Sec.  1.47(b). As 
noted above in the discussion regarding proposed Sec.  1.42, the proof 
required to show proprietary interest and to show that the action is 
necessary to preserve the rights of the parties is discussed in MPEP 
Sec.  409.03(f) and (g). The language ``or to prevent irreparable 
damage'' contained in current Sec.  1.47(b) has not been included in 
proposed Sec.  1.47(c) because amended 35 U.S.C. 118 does not contain 
this language.
    Proposed Sec.  1.47(d) contains language similar to current Sec.  
1.47(c). Specifically, proposed Sec.  1.47(d) provides that the Office 
will publish notice of the filing of the application in the Official 
Gazette, and the Office may send notice of the filing of the 
application to the nonsigning inventors at the address(es) provided in 
the petition under Sec.  1.47. The option to give notice via 
publication in the Official Gazette helps the Office to reach 
nonsigning inventors, particularly when the Office knows that such 
notice, if sent to the address(es) provided in the petition, would only 
be returned to the Office as being undeliverable. Proposed Sec.  
1.47(d) also permits the Office to dispense with the notice provision 
in a continuing application (including a continuation-in-part), not 
just a continuation or divisional application, if notice regarding the 
filing of the prior application was given to the nonsigning inventor 
such as by publication in the Official Gazette.
    Proposed Sec.  1.47(e) provides that a nonsigning inventor or legal 
representative may subsequently join in the application by submitting 
an oath or declaration under Sec.  1.63 subsequent to a Sec.  1.47 
petition being granted. This is similar to language contained in 
current Sec.  1.47(a) and (b) that provides for a nonsigning inventor 
to subsequently join in the application by filing an executed oath or 
declaration complying with Sec.  1.63. Proposed Sec.  1.47(e) also 
provides that the submission of an oath or declaration by a nonsigning 
inventor or legal representative after a Sec.  1.47 petition has been 
granted will not permit the nonsigning inventor or legal representative 
to revoke or grant a power of attorney. This is not a change in 
practice but is merely a clarification of power of attorney practice.
    Section 1.48: Section 1.48 is proposed to be amended to add 
paragraph (k) to provide for a simplified procedure for correcting 
inventorship in a national stage application. As discussed below, 
current Sec.  1.497(d) and (e), which include provisions for correcting 
inventorship in a national stage application, are proposed to be 
deleted. The corrective procedure in proposed Sec.  1.48(k) has been 
simplified in light of the amendment to 35 U.S.C. 116 eliminating the 
requirement that the error in inventorship ``arose without any 
deceptive intention'' on the part of the inventor being added or the 
inventor being deleted. Proposed Sec.  1.48(k) provides that the 
procedure in Sec.  1.48(a) may also be used for correcting an error in 
inventorship in a national stage application under 35 U.S.C. 371 prior 
to becoming a nonprovisional application, and for correcting an error 
in the inventive entity set forth in an executed declaration submitted 
under PCT Rule 4.17(iv).
    Section 1.48 is also proposed to be amended to eliminate the 
``without deceptive intention'' requirement (as this requirement has 
been eliminated from 35 U.S.C. 116), and delete the reference to Sec.  
1.43 (as Sec.  1.42 is proposed to be amended to include the subject 
matter of Sec.  1.43).
    Section 1.53: Section 1.53(f)(4) is proposed to be amended by 
revising reference to Sec.  1.63(d) consistent with the proposed change 
in Sec.  1.63(d). Specifically, the terms ``continuation'' and 
``divisional'' in paragraph (f)(4) would be replaced by ``continuing'' 
to reflect that proposed Sec.  1.63(d) also covers continuation-in-part 
applications.
    Section 1.55: Sections 1.55(a)(1)(i), (c), and (d)(1)(ii) are 
proposed to be amended to require a foreign priority claim be 
identified in an application data sheet (Sec.  1.76), or a supplemental 
application data sheet, as is appropriate. The revision is intended to 
make clear what may be a confusing practice to practitioners. 
Currently, a foreign priority claim may be located anywhere in an 
application for Sec.  1.55 compliance, while compliance with current 
Sec.  1.63(c) requires the foreign priority claim must be supplied in 
an application data sheet or identified in the oath or declaration. 
Thus, it is possible for an applicant's foreign priority claim to 
comply with Sec.  1.55, but not Sec.  1.63(c). The proposed amendment 
establishes a single location for the foreign priority claim in the 
application data sheet, which would facilitate application processing 
by providing practitioners with a clear location for the foreign 
priority claim, and the Office with one location to quickly locate the 
foreign priority claim.

[[Page 990]]

    35 U.S.C. 119(b) does not specify the particular location in the 
application for setting forth a claim to the benefit of a prior foreign 
application. However, 35 U.S.C. 119(b) provides that the foreign 
application is identified by specifying the application number, country 
or intellectual property authority, and filing date of each foreign 
application for which priority is claimed. In addition, 37 CFR 
1.55(a)(1)(i) requires identification of any foreign application having 
a filing date before that of the application for which priority is 
claimed. Providing this information in the application data sheet 
constitutes the claim for foreign priority as required by 35 U.S.C. 
119(b) and Sec.  1.55(a).
    Providing this information in a single location will facilitate 
more efficient processing of applications, as the Office will only have 
to look at one location for the priority claim and the most recent 
application data sheet will govern. Currently, the Office must look at 
the specification, amendments to the specification, the oath or 
declaration, the application data sheet (if provided), and elsewhere to 
determine the priority claim. When applicants provide inconsistent 
information relating to the claim for foreign priority, the Office must 
then determine which priority claim governs.
    Additionally, providing this information in a single location will 
facilitate review of patents and patent application publications, 
because applications frequently provide a benefit and/or foreign 
priority claim in the first sentence(s) of the specification, which is 
superseded by an application data sheet that includes a different 
benefit or foreign priority claim, and thus the benefit claim and/or 
foreign priority information included in the first sentence(s) of the 
specification is different from the benefit claim and/or foreign 
priority information contained on the front page of the patent or 
patent application publication. While the benefit and/or foreign 
priority claim on the front page of the patent or patent application 
publication is usually correct, anyone (including an examiner, a 
practitioner, or the public) reviewing the patent or patent application 
publication must review the file history of the application to verify 
this to be correct.
    Since most applications are filed with an application data sheet, 
requiring the benefit and/or foreign priority claims to be included in 
the application data sheet will not require most practitioners to 
change their practice.
    Section 1.63: Section 1.63(a) is proposed to be amended to recite 
applicability of the paragraph to both 35 U.S.C. 111(a) national 
applications and 35 U.S.C. 371 national stage applications of 
international PCT applications. Section 1.63(a)(1) is proposed to be 
amended to delete the statement relating to a lack of a minimum age 
requirement as unnecessary in view of the later requirement, proposed 
Sec.  1.63(a)(6) (reformatted from current Sec.  1.63(b)(2)), that the 
person signing has reviewed and understands the contents of the 
application.
    Section 1.63(a)(2) is proposed to be amended to simplify the 
requirement for the inventor name to be his or her full name without 
reference to a family or given name, but an initial may only be 
provided for the middle name. The requirement for a full name is 
sufficient, given that individuals do not always have both a family 
name and a given name, or have varying understandings of what a 
``given'' name requires.
    Section 1.63(a)(3) is proposed to be amended to delete the 
requirement for identifying the country of citizenship for each 
inventor, as this information has been deleted as a requirement from 35 
U.S.C. 115. Section 1.63(a)(3) would also be amended to set forth a 
requirement to identify the application to which the oath or 
declaration is directed (currently set forth in Sec.  1.63(b)(1)).
    Section 1.63(a)(4) is proposed to be amended to delete the 
requirement that the person executing the oath or declaration state 
that he or she is believed to be the ``first'' inventor consistent with 
the language in 35 U.S.C. 115(b)(2) and with the statutory change to a 
first-inventor-to-file system from a first-to-invent system. 
Additionally, Sec.  1.63(a)(4) is proposed to be clarified by adding 
the term ``joint'' before inventors and referring to the submission of 
the oath or declaration rather than referring to a patent being sought.
    Section 1.63(a)(5) is proposed to be added to contain the 
requirement from 35 U.S.C. 115(b)(1) that the oath or declaration state 
that the application was made or was authorized to be made by the 
inventor.
    Section 1.63(a)(6) is proposed to be added to contain the 
requirement from current Sec.  1.63(b)(2) that the person making the 
oath or declaration has reviewed and understands the application. 
Sections 1.63(a)(4) and (a)(6), as proposed, also require that the 
averments therein be applicable in any application for which the oath 
or declaration is being submitted such as a continuing application.
    Section 1.63(a)(7) is proposed to be added to contain the 
requirement from current Sec.  1.63(b)(3) regarding the Sec.  1.56 duty 
being acknowledged.
    Section 1.63(b) is proposed to be amended by reciting the 
requirements for the mailing address and the residence of an inventor 
(transferred from current Sec.  1.63(c)(1)), and adds the alternative 
of using an application data sheet (transferred from current Sec.  
1.63(c)). The mailing address requirement would be further clarified by 
noting that it is the address where the inventor ``customarily receives 
mail,'' which may encompass an address where the inventor works, a post 
office box, or other address where mail is received, even if it is not 
the main mailing address of the inventor. The mailing address is for 
the benefit of the inventor in the event that the Office needs to 
contact the inventor directly. Accordingly, care should be taken in 
identifying the mailing address, but the requirement is not one that 
the Office would investigate or confirm its accuracy. Current 
Sec. Sec.  1.63(b)(1) through (b)(3) are proposed to be deleted as the 
requirements are moved to other portions of proposed Sec.  1.63 (i.e., 
current paragraph (b)(1) is moved to paragraph (a)(3), current 
paragraph (b)(2) is moved to paragraph (a)(6), and current paragraph 
(b)(3) is moved to paragraph (a)(7)).
    Section 1.63(c) and (c)(1) are proposed to be amended by moving the 
current requirements to paragraph (b). Current Sec.  1.63(c)(2) is 
proposed to be amended by deleting the current requirement for 
identifying the claim for foreign priority under Sec.  1.55 in the oath 
or declaration. This amendment reflects the Office's desire to 
harmonize presentation of a claim for foreign priority under Sec.  1.55 
and of a claim for domestic benefit under Sec.  1.78. The current 
requirement that the domestic claim for benefit be placed in the first 
sentence(s) of the specification or an application data sheet (Sec.  
1.76), while requiring that a foreign priority claim be identified in 
an oath or declaration or application data sheet has led to confusion 
by applicants as to the proper placement of these priority or benefit 
claims and to Office processing issues of such claims. As Section 3 of 
the Leahy-Smith America Invents Act has placed foreign priority claims 
on equal footing as domestic benefit claims regarding what may be 
relied upon as a prior art date, it is important that there be one 
unified place that the Office and the public can rely upon in 
determining the presence of these claims. Accordingly, Sec. Sec.  1.55 
and 1.78 are proposed to be amended to provide for a unified way in the 
application data sheet to present foreign priority and domestic benefit

[[Page 991]]

claims for inclusion in a printed patent or a patent application 
publication.
    Sections 1.63(c)(1)(i) and (ii) are proposed to provide for the use 
of assignments to also include the oath or declaration as provided in 
35 U.S.C. 115(e). Proposed Sec. Sec.  1.63(c)(1)(i) and (ii) would 
provide that the inventor can, when executing an assignment of his or 
her invention, include the information and statements that would be 
required under Sec. Sec.  1.63(a) and (b). Section 1.63(c)(1)(ii) would 
require that the assignment be made of record by recording the 
assignment, and filing the copy of the assignment in the application 
for which it is being used as an oath or declaration. If the assignment 
has not been recorded prior to its reliance in an application, the 
assignment may be sent for recording at the same time it is being 
submitted in the application, provided applicant makes a statement to 
that effect. Applicants need to be mindful of the proposed amendment in 
Sec.  3.31 requiring a conspicuous indication, such as by use of a 
check-box on the assignment cover sheet, to alert the Office that an 
assignment submitted with an application is submitted for a dual 
purpose: recording in the assignment database, such as to support a 
power of attorney, and for use in the application as the oath or 
declaration. Assignments cannot be recorded unless an application 
number is provided against which the assignment is to be recorded.
    Currently, when an assignment is submitted for recording along with 
a paper application, the assignment is separated from the paper 
application and forwarded to the Assignment Recordation Branch for 
recording in its database at the time when the application is assigned 
an application number. The assignment in such case does not become part 
of the application file.
    Under the proposed new permitted use of an assignment as including 
an oath or declaration, the Office, when it receives an assignment with 
a paper application filing, will continue to forward the assignment to 
the Assignment Recordation Branch without making it part of the 
application file, unless the check-box is used on the assignment cover 
sheet to indicate the intended use of the assignment to comply with the 
oath or declaration requirement. Where the check-box is used, the 
Office will make a copy of the assignment to scan the assignment into 
the Image File Wrapper (IFW) file for the application before forwarding 
it to the Assignment Recordation Branch. Failure to utilize the check-
box will result in a Notice to File Missing Parts of Nonprovisional 
Application for an oath or declaration, as the assignment will not be 
made part of the application file and the Office will not recognize 
compliance with the Sec.  1.63 oath or declaration requirement. A copy 
of the assignment would need to be submitted in reply to the Notice 
along with the surcharge for the late submission of the oath or 
declaration.
    The Office has considered not requiring use of a check-box and 
automatically scanning an assignment into the IFW file for the 
application, but the Office believes that applicants should be provided 
with the option of submitting an assignment only for recordation 
purposes without such assignment becoming part of the IFW file.
    For EFS-Web filing of application papers, EFS-Web does not accept 
assignments for recording purposes when filing an application. See 
Legal Framework for Electronic Filing System--Web (EFS-Web), 74 FR 
55200, 55202 (Oct. 27, 2009). Recording of assignments may only be done 
electronically in EPAS (Electronic Patent Assignment System), 
notwithstanding the existence of a link from EFS-Web to EPAS that can 
be utilized to file an assignment after the application is filed. 
Accordingly, for EFS-Web submissions, all assignments submitted on 
filing of the application or later submitted will be made of record in 
the application (entered into the Image File Wrapper (IFW)), and will 
not be forwarded to the Assignment Recordation Branch for recordation 
by the Office. Thus, an assignment must be separately submitted to the 
Assignment Recordation Branch, and in the application file where the 
assignment is to be used for a dual purpose. It is the intention of the 
Office to develop a system whereby one submission of an assignment can 
be electronically treated for the dual purpose.
    The Office considered whether a clarifying amendment to Sec.  
1.12(b) should be made to state that a recorded assignment should be 
available to the public where it is used as the oath or declaration. 
However, assignment records are available to the public whenever the 
related application is available to the public. As proposed, a copy of 
the recorded assignment document would become part of the application 
file and would be available to the public when the application becomes 
available to the public.
    Section 1.63(c)(2) is proposed to provide that any reference to an 
oath or declaration pursuant to Sec.  1.63 would include the assignment 
as provided for in Sec.  1.63.
    Section 1.63(d)(1) is proposed to be amended to provide that a 
newly executed oath or declaration in an application claiming benefit 
under 35 U.S.C. 120, 121, or 365(c) is not required in a later-filed 
application where the oath or declaration in the earlier-filed 
application is compliant with Sec.  1.78. Section 1.63(d)(1) is also 
proposed to be amended to add a reference to Sec.  1.497(a).
    The Office considered whether to restrict the use of a copy of an 
oath or declaration to one from an ``immediate'' earlier-filed 
application, but determined that an oath or declaration copy could be 
used from any earlier-filed application in a chain of benefit claims so 
long as the oath or declaration continues to be appropriate. This 
interpretation reflects the breadth of the language utilized by the 
statute.
    35 U.S.C. 115(g)(1)(A) provides an exception to the requirement for 
an oath or declaration for applications where the application claims 
the benefit under 35 U.S.C. 120, 121, or 365(c) of the filing of an 
earlier-filed application. As a claim for benefit under 35 U.S.C. 120 
includes continuation-in-part (CIP) applications, it is also proposed 
to extend the use of copies of oaths or declarations to CIP 
applications where appropriate, in addition to the current 
continuations and divisional applications, by the use of the term 
``continuing.'' Applicants are advised that it would not be proper to 
submit any paper, e.g., a copy of a declaration, in a continuing 
application that contains misstatements relative to the continuing 
application. Sections 1.63(a)(4) and (a)(6) are proposed to require 
that their statements (that the person executing the oath or 
declaration believes the named inventor or joint inventors to be the 
original inventor or original joint inventors of the claimed invention 
in the application, and that the person making the oath or declaration 
has reviewed and understands the contents of the application) be 
applicable to the ``application for which the oath or declaration is 
being submitted,'' which includes any continuing application for which 
a copy of an oath or declaration is being submitted under 35 U.S.C. 
115(g) and Sec.  1.63(d). Thus, the following statements in the oath or 
declaration must be true for the continuing application in order for an 
oath or declaration from a prior application to be properly submitted 
in the continuing application under 35 U.S.C. 115(g) and Sec.  1.63(d): 
(1) That the person executing the oath or declaration believes the 
named inventor or joint inventors to be the original inventor or 
original joint

[[Page 992]]

inventors of the claimed invention in the application for which the 
oath or declaration is being submitted (i.e., the oath or declaration 
states the correct inventorship for the continuing application); (2) 
that the person making the oath or declaration has reviewed and 
understands the contents of the application for which the oath or 
declaration is being submitted, including the claims, as amended by any 
amendment specifically referred to in the oath or declaration; and (3) 
that the person making the oath or declaration acknowledges the duty to 
disclose to the Office all information known to the person to be 
material to patentability as defined in Sec.  1.56.
    Section 1.63(d)(1)(i) is proposed to be simplified by eliminating 
the word ``nonprovisional'' as unnecessary since provisional 
applications do not require an oath or declaration, and by referring to 
compliance with the section as opposed to individual paragraphs of the 
section. Section 1.63(d)(1)(ii) is proposed to contain the requirement 
set forth in current Sec.  1.63(d)(1)(iv) relating to the oath or 
declaration copy showing the signature or an indication thereon that it 
was signed. The requirement of current Sec.  1.63(d)(1)(ii), relating 
to deleting inventors, is proposed to be moved to proposed Sec.  
1.63(d)(2). The requirement of current Sec.  1.63(d)(1)(iii) is 
proposed to be deleted in view of the applicability of proposed Sec.  
1.63(d) to continuing applications, including continuation-in-part 
applications. Current Sec.  1.63(d)(1)(iv) subject matter, relating to 
the presence of a signature, is proposed to be moved to proposed Sec.  
1.63(d)(1)(ii). Section 1.63(d)(1)(iii) is proposed to require that any 
new inventors named in the continuing application provide an executed 
oath or declaration in compliance with this section.
    Section 1.63(d)(2) is proposed to contain the requirements set 
forth in current Sec. Sec.  1.63(d)(1)(ii) and 1.63(d)(2) relating to 
the continuing application seeking to name fewer inventors and a 
statement requesting deletion of the name or names of the person who 
are not inventors. It is also proposed to require that such a statement 
requesting deletion be signed pursuant to Sec.  1.33(b). Additionally, 
proposed Sec.  1.63(d)(2) applies to continuing applications to include 
continuation-in-part applications, rather than just continuation and 
divisional applications.
    Section 1.63(d)(3) is proposed to contain the requirements of 
current Sec.  1.63(d)(3), (d)(3)(i), and (d)(3)(ii) in simplified form. 
The provision for submission of a copy of an oath or declaration where 
the earlier-filed application has been accorded status under Sec.  1.47 
has been expanded to cover Sec.  1.42 situations relating to a deceased 
or legally incapacitated inventor.
    Current Sec.  1.63(d)(4) is proposed to be deleted. The power of 
attorney in a continuing application would be covered in proposed Sec.  
1.32. The correspondence address in a continuing application would be 
treated in proposed Sec.  1.33(g).
    Section 1.63(d)(5) is proposed to be deleted. Whether a newly 
executed declaration by an added inventor is required in a continuing 
application would be covered by Sec.  1.63(d)(1).
    Section 1.63(e) is proposed to be revised in that the current 
requirement for a newly executed declaration in (CIP) applications 
would be covered by Sec.  1.63(d)(1). It is proposed that Sec.  1.63(e) 
be amended to cover the submission of oaths or declarations pursuant to 
35 U.S.C. 115(h)(1). 35 U.S.C. 115(h)(1) provides that any person 
making a statement under this section may at any time ``withdraw, 
replace, or otherwise correct the statement at any time.'' Section 
1.63(e) as proposed would acknowledge that an oath or declaration 
submitted at any time pursuant to 35 U.S.C. 115(h)(1) would be placed 
in the file record of the application or patent, but may not be 
reviewed by the Office in view of the open ended time frame that the 
statute provides. Oaths or declarations submitted pursuant to 35 U.S.C. 
115(h)(1) that are timely submitted during prosecution of an 
application would continue to be reviewed for compliance. A reminder is 
set forth that mere submission of an oath or declaration pursuant to 35 
U.S.C. 115(h)(1) would not, however, act to correct inventorship as 
compliance with Sec.  1.48 in an application and Sec.  1.324 in a 
patent is required.
    Section 1.64: Section 1.64(b) is proposed to be amended to 
eliminate the requirement that the oath or declaration must state the 
citizenship of the legal representative who is signing the oath or 
declaration for a deceased inventor. Since the requirement for an 
inventor to state his country of citizenship in the oath or declaration 
has been eliminated from 35 U.S.C. 115, there is no basis to require 
the legal representative of an inventor to state the legal 
representative's citizenship. Section 1.64(b) is also proposed to be 
amended to change the phrase ``deceased inventor'' to ``deceased or 
legally incapacitated inventor'' in the second sentence. This change 
would require both a legal representative of a deceased inventor and a 
legal representative of an incapacitated inventor to state that the 
person is a legal representative. Additionally, the residence and 
mailing address of the legal representative would also be required, but 
Sec.  1.64 is proposed to be amended to permit such information to be 
provided in an application data sheet. This will permit the submission 
of such information without requiring additional contact with the legal 
representative of a deceased or legally incapacitated inventor. Section 
1.64(b) is also proposed to be amended to delete the reference to Sec.  
1.43 since Sec.  1.43 is proposed for combination with Sec.  1.42.
    Section 1.67: The title of Sec.  1.67 is proposed to be amended to 
``Noncompliant oath or declaration'' to better focus on the purpose of 
the rule. 35 U.S.C. 115(h) limits the situations in which the Office 
may require a supplemental oath or declaration. Section 1.67 is amended 
to address the manner in which deficiencies in an oath or declaration 
can be corrected.
    Section 1.67(a) is proposed to be amended to refocus the language 
therein away from a supplemental oath or declaration to an oath or 
declaration that complies with the requirements of 35 U.S.C. 115 and 
Sec.  1.63 or 1.162. Sections 1.67(a)(1) and (2) are proposed to be 
amended to conform to the changes to the title and Sec.  1.67(a) by 
replacing the term ``supplemental'' with ``in compliance,'' and to 
delete reference to Sec.  1.43 as Sec.  1.43 is being proposed to be 
combined with Sec.  1.42. Section 1.67(a)(3) is proposed to be amended 
by deleting the explanatory parentheses as unnecessary in view of the 
cross-reference to Sec.  1.63 and updating the reference to recite 
Sec.  1.63(b). Additionally, it is proposed to refer to a supplemental 
application data sheet in place of application data sheet, as a Sec.  
1.76 submission submitted after filing of the application must be a 
supplemental application data sheet and not an application data sheet 
even though it is the first Sec.  1.76 submission.
    Section 1.67(b) is proposed to retain the material from current 
Sec.  1.67(b) relating to no new matter by deleting the term 
``supplemental,'' as revised Sec.  1.67 is clarified to be directed 
towards noncompliant oaths or declarations correcting deficiencies or 
inaccuracies.
    Section 1.76: Section 1.76(a) is proposed to be amended to clarify 
that an application data sheet may be submitted in an international 
application entering the national stage under 35 U.S.C. 371. Section 
1.76(a) is also proposed to be amended to require that an application 
data sheet must be submitted to claim priority to or the benefit of a 
prior-filed application under

[[Page 993]]

35 U.S.C. 119, 120, 121, or 365 for consistency with the proposed 
changes to Sec. Sec.  1.55 and 1.78.
    Section 1.76(c)(1) is proposed to be amended to clarify that after 
an application has been filed, a supplemental application data sheet, 
not an application data sheet, is required. Section 1.76(c)(2) is 
proposed to be amended to require that changes to the information must 
be indicated by underlining for insertions of text, and strike-through 
or brackets for deletions of text.
    The revision is intended to make clear the difference between an 
application data sheet and a supplemental application data sheet. When 
an application data sheet is provided, the application data sheet 
becomes part of the application as filed and thus it does not have to 
be signed by the applicant, unless it is a form such as PTO/SB/14 and a 
nonpublication request is being made by the applicant on the form. When 
a supplemental application data sheet is provided, the supplemental 
application data sheet is an amendment to the application, and 
therefore the supplemental application data sheet must be signed in 
accordance with Sec.  1.33(b). Applicants are also encouraged and 
reminded to use and submit an application data sheet (PTO/SB/14) as an 
EFS-Web Fillable Form, rather than a scanned PDF image, to benefit from 
having the data loaded directly into USPTO electronic systems (there is 
no Office form for a supplemental application data sheet). Use of an 
application data sheet benefits both the Office and patent 
practitioners as the data is loaded directly into the USPTO electronic 
systems, thus the data is accurately captured, reducing time that is 
needed to review the Filing Receipt.
    Representative information including the registration number of 
each practitioner, or the customer number, appointed with a power of 
attorney or authorization of agent in the application may be provided 
on an application data sheet. Providing this information in the 
application data sheet does not constitute a power of attorney or 
authorization of agent in the application (see Sec. Sec.  1.76(b)(4), 
1.34).
    Section 1.76(d) continues to set forth the procedure for resolving 
inconsistencies between application data sheets and other documents. 
The Office contemplated clarifying this subsection to address the 
situation where inconsistent information regarding a benefit claim and/
or foreign priority is supplied by the application data sheet and the 
specification as filed, and provide that the application data sheet 
will govern. In view of the proposed changes to Sec. Sec.  1.55 and 
1.78, which state that benefit and/or foreign priority claims must be 
in an application data sheet, there is no need for this further 
clarification.
    Section 1.76(d)(1) is proposed to be amended to exclude foreign 
priority claims in accordance with Sec.  1.55(a)(1) and benefit claims 
in accordance with Sec. Sec.  1.78(a)(2)(iii) and 1.78(a)(5)(iii) from 
this subsection of the rule, which indicates which information will 
govern when inconsistent information is provided in an application. 
With the amendments to Sec. Sec.  1.55(a)(1), 1.78(a)(2)(iii), and 
1.78(a)(5)(iii), the foreign priority claim and/or benefit claim must 
be in the application data sheet. Thus, an amendment to the 
specification will not govern over a foreign priority claim or benefit 
claim in an application data sheet.
    Section 1.78: Section 1.78(a)(2)(iii) is proposed to be amended 
such that the reference requirement for a benefit claim to a prior-
filed nonprovisional application or international application 
designating the United States of America by a later-filed 
nonprovisional application must be in an application data sheet or a 
supplemental application data sheet.
    Sections 1.78(a)(5)(iii) is proposed to be amended such that the 
reference requirement for a benefit claim to a prior-filed provisional 
application by a later-filed nonprovisional application must be in an 
application data sheet or a supplemental application data sheet.
    Providing this information in the application data sheet 
constitutes the specific reference required by 35 U.S.C. 119(e) or 120. 
The patent statute requires that a claim to the benefit of a 
provisional (35 U.S.C. 119(e)(1)) or nonprovisional (35 U.S.C. 120) be 
in the application by specific reference thereto. Since the application 
data sheet (if provided) is considered part of the application, the 
specific reference to an earlier filed provisional or nonprovisional 
application in the application data sheet meets the ``specific 
reference'' requirement of 35 U.S.C. 119(e)(1) or 120.
    Providing this information in a single location will facilitate 
more efficient processing of applications, as the Office will only have 
to look at one location for the benefit claim and the most recent 
application data sheet will govern. Currently, the Office must look at 
the specification, amendments to the specification, and the application 
data sheet if provided to determine the benefit claim. When applicants 
provide inconsistent information between the three sources, the Office 
must then determine which benefit claim governs in accordance with the 
rule.
    Providing this information in a single location will also 
facilitate review of patents and patent application publications, 
because applications frequently provide a benefit and/or foreign 
priority claim in the first sentence(s) of the specification, which is 
amended by an application data sheet that includes a different benefit 
or foreign priority claim, and thus the benefit claim and/or foreign 
priority information included in the first sentence(s) of the 
specification is different from the benefit claim and/or foreign 
priority information contained on the front page of the patent or 
patent application publication. While the benefit and/or foreign 
priority claim on the front page of the patent or patent application 
publication is usually correct, anyone (including an examiner, a 
practitioner, or the public) reviewing the patent or patent application 
publication must review the file history of the application to verify 
this to be correct.
    Since most applications are filed with an application data sheet, 
requiring benefit and/or foreign priority claims to be included in the 
application data sheet will not require most practitioners to change 
their practice.
    Section 1.172: Section 1.172 is proposed to be amended in its title 
to delete the duplicative reference to assignees, as assignees may be 
an applicant in some circumstances for a reissue application. Section 
1.172 is proposed to be reformatted to clarify who may sign, and what 
documents must accompany, a reissue oath or declaration. Section 
1.172(a) is proposed to be amended to continue to require that the 
reissue oath or declaration must be accompanied by the written consent 
of all assignees, if any, owning an undivided interest in the patent. 
Current subject matter in Sec.  1.172(a) relating to not enlarging the 
scope of the claims would be transferred to paragraph (b) and the 
assignment information transferred to paragraph (c). Section 1.172(b) 
is proposed to be amended to focus on signing of the oath or 
declaration and includes paragraph titles to distinguish between who 
may sign the reissue oath or declaration for a nonbroadening reissue 
(proposed Sec.  1.172(b)(1)(i) through (b)(1)(iii)) versus a broadening 
reissue (Sec.  1.172(b)(2)(i) and (b)(2)(ii)). Current subject matter 
in Sec.  1.172(b) would be moved to proposed Sec.  1.172(d). Section 
1.172(b)(2)(ii) is proposed to authorize the assignee of the entire 
interest to sign the reissue oath or declaration for a broadening 
reissue filed on or after September 16,

[[Page 994]]

2012, where the application for the original patent was filed by the 
assignee of the entire interest (i.e., the oath or declaration was 
executed by the assignee under Sec.  1.42 or Sec.  1.47).
    Section 1.172(c) includes the language already present in current 
Sec.  1.172(a) and clarifies that all assignees, including partial 
assignees, who consent to the reissue must establish their ownership in 
the patent. Section 1.172(d) repeats the language found in current 
Sec.  1.172(b).
    Section 1.175: Section 1.175(a) is proposed to be amended to 
clarify the requirement that an applicant identify in the reissue oath 
or declaration each applicable reason that forms the basis for reissue. 
The reasons include: (1) A defective specification or drawing (Sec.  
1.175(a)(1)); (2) the patentee claiming more than the patentee had a 
right to claim in the patent (Sec.  1.175(a)(2)); and (3) the patentee 
claiming less than the patentee had the right to claim in the patent 
(Sec.  1.175(a)(3)). Proposed Sec.  1.175(a)(3) also requires 
identification of a broadened claim and a broadened portion of the 
specification, if a change thereto is the basis for the claim 
broadening.
    Section 1.175(a) retains the requirement from current Sec.  
1.175(a)(1) that the reissue oath or declaration identify at least one 
error that is being relied upon as the basis for reissue and recites 
the statutory basis for reissue, 35 U.S.C. 251. Examples of proper 
error statements are discussed in MPEP Sec.  1414, II. The reissue oath 
or declaration may identify more than one specific error that forms the 
basis of the reissue, but at least one error must be identified.
    Section 1.175(b) is proposed to be amended to clarify that a claim 
broadened in any respect must be treated and identified as a broadened 
claim. In addition, Sec.  1.175(b) is proposed to be further amended to 
delete the requirement for supplemental reissue oaths or declarations 
in view of the change to 35 U.S.C. 251 in Section 20 of the Leahy-Smith 
America Invents Act (i.e., removal of the ``without any deceptive 
intention'' provision). A claim that is broadened in any respect is a 
broadened claim for purposes of 35 U.S.C. 251. See Tillotson, Ltd. v. 
Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987), In re Ruth, 278 
F.2d 729, 730 (CCPA 1960), and In re Rogoff, 261 F.2d 601, 603 (CCPA 
1958). The requirement that a claim broadened in any respect be treated 
as a broadened claim is important to distinguish who can sign the 
reissue oath or declaration. It also is important because a reissue 
application that broadens the scope of the original patent may only be 
filed within two years from the grant of the original patent. See MPEP 
Sec.  1412.03 for the meaning of a ``broadened reissue claim'' and 
examples.
    An application that does not seek to broaden the scope of the 
original patent may be filed with a reissue oath or declaration that is 
executed by the assignee of the entire right, title, and interest. 
However, if the reissue application broadens one or more of the claims 
in any respect, the reissue oath or declaration must be executed by the 
inventors, the legal representatives of deceased or legally 
incapacitated inventors, or a Sec.  1.47 applicant for a nonsigning 
inventor (proposed Sec.  1.172(b)(2)(i)). As discussed above, the 
assignee of the entire interest may sign the reissue oath or 
declaration for a broadening reissue filed on or after September 16, 
2012, where the application for the original patent was filed by the 
assignee of the entire interest (proposed Sec.  1.172(b)(2)(ii)), that 
is, the oath or declaration was executed by the assignee under 
Sec. Sec.  1.42 or 1.47.
    Section 1.175(c) is proposed to be amended to clarify that where 
all errors identified in the reissue oath or declaration pursuant to 
proposed Sec.  1.175(a) are no longer being relied upon as the basis 
for reissue, a reissue oath or declaration that identifies a new error 
currently being relied upon as the basis for reissue must be filed. The 
elimination of supplemental reissue oaths or declarations in current 
Sec.  1.175(b) is directed towards lack of deceptive intent regarding 
the error being corrected, and not the statutory requirement of 
identification of at least one error. Section 1.175(c) is also proposed 
to be amended to clarify that the reissue oath or declaration that 
identifies the new error currently being relied upon as the basis for 
reissue need only address the new error and need not identify any prior 
error identified in a reissue oath or declaration. This requirement is 
consistent with the discussion in MPEP Sec.  1414.01, I.
    The reissue oath or declaration must identify a proper error that 
forms the basis for reissue. If the specified error is no longer being 
corrected in the reissue application, then a new error must be 
identified in the reissue oath or declaration so that the record is 
clear in identifying a proper basis for reissue. The latest reissue 
oath or declaration need not identify each specific error that was 
identified in any earlier reissue oath or declaration; it must only 
identify an error that is currently being relied upon or corrected.
    Section 1.175(e) is proposed to be amended to provide a title to 
identify the paragraph's applicability to continuing applications, MPEP 
1414, II, and to clarify in the rule the ability to file copies of 
reissue oaths or declarations from prior reissue applications in 
continuing applications consistent with Sec.  1.63(d). Section 1.175(e) 
would now consist of paragraphs (e)(1), (e)(2), (e)(2)(i) and (ii).
    Section 1.175(e)(1) is proposed to provide that where a continuing 
reissue application replaces a prior reissue application, the 
requirement for a reissue oath or declaration pursuant to Sec.  1.172 
may be satisfied by a copy of the reissue oath or declaration from the 
prior reissue application it replaces. The concept of a ``prior 
application,'' in this paragraph and in paragraph (e)(2), is intended 
to be broader than an immediate prior application but to stay within 
the bounds of Sec.  1.63(d) and require a prior application that is 
within the chain of benefit claim.
    Section 1.175(e)(2) is proposed to provide that where a continuing 
reissue application does not replace a prior reissue application, the 
requirement for a reissue oath or declaration pursuant to Sec.  1.172 
may be satisfied by a newly executed oath or declaration that 
identifies at least one error in the original patent which has not been 
corrected in a prior reissue application, Sec.  1.175(e)(2)(i), or how 
an identified error is currently being corrected in a manner different 
than in a prior reissue application, Sec.  1.175(e)(2)(ii).
    Under current practice, a new oath or declaration is required in a 
continuing reissue application notwithstanding that there is no change 
in the error being corrected. In certain circumstances, such as set 
forth in the following examples, applicants request that they be 
allowed to use a copy of the declaration from prior reissue 
application. Some situations currently need to be addressed via a 
petition for waiver under Sec.  1.183 with a $400 fee, that the Office 
would grant in appropriate circumstances, such as set forth in the 
following example 2. The rule as now proposed recognizes the 
unnecessary processing delay and expense engendered by this practice, 
which would be rectified by this proposed change.
    Accordingly, a copy of a reissue oath or declaration from a prior 
reissue application may be submitted in a continuing reissue 
application where the continuing application replaces a prior reissue 
application.
    Also, a copy of a reissue oath or declaration from a prior reissue 
application may be submitted in a continuing application where the 
continuing application does not replace a prior application, but only 
where the

[[Page 995]]

identified error was not corrected and therefore would continue to 
apply in the continuing reissue application, or where the identified 
error is currently to be corrected in the continuing application in a 
manner different than in the prior application. However, to do so would 
also require a statement to either effect. Otherwise, a reissue oath or 
declaration that identifies a new error that is the basis for reissue 
must be filed. The following are examples where a copy may be used:

    Example 1: A reissue application is filed with a declaration 
under Sec.  1.175 that lists more than one error that properly 
supports reissue. The declaration can be used to file a continuing 
reissue application, even if applicant is no longer attempting to 
correct some of the originally listed errors, provided that at least 
one of the originally listed errors remains that was not corrected 
in the prior application. Under the current and proposed Sec.  
1.175, a copy may be used.
    Example 2: A reissue application is filed to amend Claim 4 to 
limit the general pump means to a centrifugal pump, and to eliminate 
the recitation of a refrigeration means. The reissue oath or 
declaration must state that the applicant believes the original 
patent to be wholly or partly inoperative or invalid by reason of 
patentee claiming more than the patentee had the right to claim in 
the patent (Sec.  1.175(a)(2)), and patentee claiming less than 
patentee had the right to claim, and identify Claim 4 (Sec.  
1.175(a)(3)). An identification that the defect was that the 
patentee claimed ``more or less'' than patentee had a right to claim 
would not comply with proposed Sec.  1.175. Moreover, the 
identification that Claim 4 is being broadened under proposed Sec.  
1.175(a)(3) would not be sufficient to specifically identify at 
least one error under proposed Sec.  1.175(a). Applicant must 
clearly specify the defect or error in the language that renders the 
original patent wholly or partly inoperative or invalid. The reissue 
oath or declaration must also provide a specific identification of 
one of the errors, e.g., Claim 4 was unduly limited by the inclusion 
of ``refrigeration means'' and is being amended to eliminate this 
recitation. Under the current rule, a petition under Sec.  1.183 is 
required for a copy to be used. Under proposed Sec.  1.175, a 
petition is not required for a copy to be used.

    The reference in current Sec.  1.175(e) to paragraph (a)(1) of 
Sec.  1.175 would be deleted as it would be unnecessary in view of the 
proposed changes.
    Section 1.175(f) is proposed to be added to provide that a reissue 
oath or declaration may be filed at any time pursuant to 35 U.S.C. 
115(h)(1), and will be placed in the file record of the reissue 
application but may not be reviewed by the Office in view of the open 
ended time frame that the statute provides. Oaths or declarations 
submitted pursuant to 35 U.S.C. 115(h)(1) that are timely submitted 
during prosecution of an application would continue to be reviewed for 
compliance. Proposed Sec.  1.175(f) is consistent with the language of 
proposed Sec.  1.63(e).
    Section 1.311: Section 1.311 is proposed to be amended by adding a 
new paragraph (c) to implement the requirement of 35 U.S.C. 118 that 
``[i]f the Director grants a patent on an application filed under [35 
U.S.C. 118] by a person other than the inventor, the patent shall be 
granted to the real party in interest and upon such notice to the 
inventor as the Director considers to be sufficient.'' Proposed Sec.  
1.311(c) provides that where an assignee, person to whom the inventor 
is under an obligation to assign the invention, or person who otherwise 
shows sufficient proprietary interest in the matter has filed an 
application under Sec. Sec.  1.42, or 1.47, the applicant must notify 
the Office of any change in ownership of the application no later than 
payment of the issue fee. The Office will treat the absence of such a 
notice as an indication that there has been no change in ownership of 
the application. Proposed Sec.  1.311(c) does not cover assignees or 
persons who otherwise show sufficient proprietary interest, unless the 
application is filed pursuant to Sec. Sec.  1.42 or 1.47.
    Section 3.81 currently provides that an ``application may issue in 
the name of the assignee'' ``where a request for such issuance is 
submitted with payment of the issue fee.'' This is accomplished by 
providing the assignee information in box 3 of the issue fee 
transmittal form, form 85B. The use of box 3 would be required where 
ownership of the application changed from the filing of the application 
and the application was filed pursuant to Sec. Sec.  1.42 or 1.47.
    Section 1.497: Section 1.497 is proposed to be amended to be 
consistent with the amendments to 35 U.S.C. 115 and the proposed 
amendments to Sec.  1.63. Under the current provisions of Sec.  1.497, 
while an oath or declaration in a national stage application under 35 
U.S.C. 371 must comply with the requirements of Sec.  1.63, it will be 
accepted as sufficient for purposes of entering the U.S. national stage 
if certain minimum requirements are met. See Sec.  1.497(c). The 
proposed amendment to Sec.  1.497(a) through (c) maintains this 
practice. The reference to Sec.  1.43 in current Sec.  1.497(b)(1) and 
(2) would be deleted from the subject matter now found in the proposed 
Sec.  1.497(b)(6).
    Current Sec.  1.497(d) through (e) are proposed to be deleted. A 
simplified procedure for correcting inventorship in a national stage 
application is proposed to be added to Sec.  1.48, as new subsection 
Sec.  1.48(k), since Sec.  1.48 covers correction of inventorship in 
patent applications (other than reissue). The corrective procedure has 
been simplified in light of the amendment to 35 U.S.C. 116 eliminating 
the requirement that the error in inventorship ``arose without any 
deceptive intent'' on the part of the inventor being removed or added. 
Current Sec.  1.497(f) is proposed to be deleted because of the 
amendment to 35 U.S.C. 115. Current Sec.  1.497(g) is proposed to be 
deleted in view of the proposed amendment to Sec.  1.63 eliminating 
foreign priority claims from the oath or declaration.
    Section 3.31: Section 3.31 is proposed to be amended by the 
addition of new paragraph (h) that would implement 35 U.S.C. 115(e) 
permitting use of an assignment in lieu of an oath or declaration to 
meet the oath or declaration requirements of Sec.  1.63. Section 
3.31(h) is proposed to provide that an assignment cover sheet must 
contain a conspicuous indication of an intent to utilize the assignment 
as the required oath or declaration under Sec.  1.63. For the 
importance of complying with this provision, see the discussion of 
Sec.  1.63(c).
    Section 3.71: Section 3.71(a) is proposed to be amended to be 
consistent with proposed Sec.  1.33, which limits prosecution by 
juristic entities. The rule is also proposed to be amended to make it 
clear that conflicts between purported assignees are handled in 
accordance with Sec.  3.73(c)(4).
    Section 3.73: Section 3.73(b) is proposed to be amended to clarify 
who may sign a statement under Sec.  3.73(b) in new paragraph 
(b)(2)(iii). Under Sec.  3.73(b), an assignee must establish its 
ownership of an application to the satisfaction of the Director in 
order to request or take action in a patent or trademark matter. 
Current Sec.  3.73(b)(2) specifies that the submission establishing 
ownership must either include a statement that the person signing the 
submission is authorized to act on behalf of the assignee (Sec.  
3.73(b)(2)(i)) or be signed by a person who has apparent authority to 
sign on behalf of the assignee (Sec.  3.73(b)(2)(ii)).
    Section 3.73(b)(2)(iii) is proposed to provide that a patent 
practitioner of record pursuant to Sec.  1.32 could sign a statement 
under Sec.  3.73(b). A patent practitioner can be considered ``of 
record'' for purposes of this section where the statement under Sec.  
3.73(b) is accompanied by a power of attorney that appoints the 
practitioner (see 37 CFR 3.73(b)(1)). Currently, a power of attorney to 
a patent practitioner to prosecute a patent application executed

[[Page 996]]

by the applicant or assignee of the entire interest does not make that 
practitioner an official of the assignee or empower the practitioner to 
sign the submission on behalf of the assignee. MPEP Sec.  324, V. 
Patent practitioners who signed statements under Sec.  3.73(b) merely 
on the basis of having been appointed in a power of attorney document 
have done so improperly.
    Section 3.73(b)(3) is proposed to clarify that any subsequent 
statement under Sec.  3.73(b) must provide a complete chain of title. 
Current Sec.  3.73(b)(1)(i) requires documentary evidence of a chain of 
title. The submission of a subsequent statement under Sec.  3.73(b) 
that only identifies the latest ``link'' in the ownership chain would 
be incomplete and deemed insufficient to establish ownership of the 
application.
    Section 3.73(c)(2) is proposed to be amended to better clarify how 
to identify to the Office the entire ownership interest. When 
establishing ownership of the application under Sec.  3.73(b), one 
needs to be cognizant of the distinction between 100 percent ownership 
of the right, title, and interest in the invention from a single 
inventor and 100 percent ownership of the entire right, title, and 
interest in the invention from all of the inventors. This provision is 
applicable such as when one assignee owns 100 percent interest from one 
inventor and another assignee owns 100 percent interest from a 
different inventor. To comply with the requirement that the entire 
right, title, and interest be identified, both assignees would need to 
set forth their ownership interest by percentage (100 percent of the 
entire right, title, and interest) Sec.  3.73(c)(2)(i), or both 
assignees would need to provide a statement that all parties owning an 
interest (without identification of percentage) have been identified, 
Sec.  3.73(c)(2)(ii). Where a sole inventor assigns all rights to 
companies A and B, but the assignment does not specify percentages of 
ownership, the statement under Sec.  3.73(b) would need to identify 
that companies A and B together own 100 percent of the entire right, 
title, and interest without specific individual percentages for company 
A and company B. Otherwise, the Office may refuse to accept the 
submission as an establishment of ownership.
    Section 3.73(c)(3) is proposed to provide that, for a statement 
under Sec.  3.73(b) from the prior application to have effect in a 
continuation or divisional application, or a continuation-in-part 
application with the same inventors or fewer, a copy of the statement 
under paragraph (b) of this section from the prior application for 
which benefit is claimed under 35 U.S.C. 120, 121, or 365(c), must be 
filed in the continuing application.
    Section 3.73(c)(4) is proposed to be added to provide that, where 
two or more purported assignees file conflicting statements under 
paragraph (b) of this section, the Director will determine which, if 
any, purported assignee will be permitted to control prosecution of the 
application. As proposed, Sec.  3.73(c)(4) provides in the rule the 
Office's practice for treating two or more conflicting statements under 
Sec.  3.73(b), currently discussed in MPEP Sec.  324, IX.
    Sections 1.51, 1.53, 1.57, 1.78, 41.37, 41.67, and 41.110 are 
proposed to be amended to substitute references to 35 U.S.C. 112(a), 
(b), and (f), for the current references to 35 U.S.C. 112, first, 
second, and sixth paragraphs. Sections 1.45 and 1.48 are proposed to be 
amended to reflect the change regarding 35 U.S.C. 116. Section 1.173 is 
proposed to be amended to reflect the change regarding 35 U.S.C. 251. 
Sections 1.48, 1.324, 1.530, and 5.25 are proposed to be amended to 
delete the provisions pertaining to a lack of deceptive intent. 
Sections 1.41, 1.46, 1.64, 1.76, 1.131, and 1.162 are proposed to be 
amended to delete the references to Sec.  1.43. Section 1.76 is 
proposed to be amended to delete the reference to an inventor's 
citizenship to reflect the change regarding 35 U.S.C. 115.

Rulemaking Considerations

    A. Administrative Procedure Act: The primary changes proposed in 
this notice implement the inventor's oath or declaration provisions of 
the Leahy-Smith America Invents Act. This notice proposes changes to 
the rules of practice that concern the process for applying for a 
patent, namely, the statements required in the oath or declaration 
required by 35 U.S.C. 115 for a patent application (including the oath 
or declaration for a reissue application), the manner of presenting 
claims for priority to or the benefit of prior-filed applications under 
35 U.S.C. 119, 120, 121, or 365, and the procedures for prosecution of 
an application by an assignee. The changes being proposed in this 
notice do not change the substantive criteria of patentability. These 
proposed changes involve rules of agency practice and procedure, and/or 
interpretive rules. See Bachow Commuc'ns., Inc. v. FCC, 237 F.3d 683, 
690 (D.C. Cir. 2001) (rules governing an application process are 
procedural under the Administrative Procedure Act); Inova Alexandria 
Hosp. v. Shalala, 244 F.3d 242, 350 (4th Cir. 2001) (rules for handling 
appeals were procedural where they did not change the substantive 
standard for reviewing claims); Nat'l Org. of Veterans' Advocates v. 
Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule 
that clarifies interpretation of a statute is interpretive).
    Accordingly, prior notice and opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law) and 
thirty-day advance publication is not required pursuant to 5 U.S.C. 
553(d) (or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d 
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 
U.S.C. 2(b)(2)(B), does not require notice and comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice.'') (quoting 5 U.S.C. 
553(b)(A)). The Office, however, is publishing these changes for 
comment as it seeks the benefit of the public's views on the Office's 
proposed implementation of these provisions of the Leahy-Smith America 
Invents Act.
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 or any 
other law, neither a regulatory flexibility analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 603.
    In addition, for the reasons set forth herein, the Deputy General 
Counsel for General Law of the United States Patent and Trademark 
Office has certified to the Chief Counsel for Advocacy of the Small 
Business Administration that changes proposed in this notice will not 
have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b). This notice proposes changes to the 
rules of practice to implement sections 4 and 20 of the Leahy-Smith 
America Invents Act, which provides changes to the inventor's oath or 
declaration. The primary impact of the changes in this notice is the 
streamlining of the requirements for oaths and declarations and the 
simplification of the filing of an application by the assignee when an 
inventor cannot or will not execute the oath or declaration. The burden 
to all entities, including small entities, imposed by these rules is a 
minor addition to that of the current regulations concerning the 
inventor's oath or declaration. The change to the manner of presenting 
claims for priority to or the benefit of prior-filed applications under 
35 U.S.C. 119, 120, 121, or 365 will not have a significant economic 
impact on a substantial number of small entities as an application data 
sheet is easy to prepare and use, and the majority of patent

[[Page 997]]

applicants already submit an application data sheet with the patent 
application. The change to reissue oath or declaration will not have a 
significant economic impact on a substantial number of small entities 
as reissue is sought by the patentee for fewer than 1,200 of the 1.2 
million patents in force each year, and a reissue applicant already 
needs to know whether claims are being broadened to comply with the 
requirements of 35 U.S.C. 251. The change to the procedures for 
prosecution of an application by an assignee will not have a 
significant economic impact on a substantial number of small entities 
as it is rare for a juristic entity to attempt to prosecute a patent 
application pro se. Therefore, the changes proposed in this notice will 
not have a significant economic impact on a substantial number of small 
entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector and the public as a whole, 
and provided on-line access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    E. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not effect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the final rule and other required information to the United 
States Senate, the United States House of Representatives, and the 
Comptroller General of the Government Accountability Office. The 
changes in this notice are not expected to result in an annual effect 
on the economy of 100 million dollars or more, a major increase in 
costs or prices, or significant adverse effects on competition, 
employment, investment, productivity, innovation, or the ability of 
United States-based enterprises to compete with foreign-based 
enterprises in domestic and export markets. Therefore, this notice is 
not expected to result in a ``major rule'' as defined in 5 U.S.C. 
804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes proposed in 
this notice do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and tribal governments, 
in the aggregate, of 100 million dollars (as adjusted) or more in any 
one year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    M. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions which involve the use of 
technical standards.
    O. Paperwork Reduction Act: This rulemaking involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collection of information involved in 
this rulemaking has been reviewed and previously approved by OMB under 
OMB Control Numbers 0651-0032 and 0651-0035. The primary impact of the 
changes in this notice is the streamlining of the requirements for 
oaths and declarations and the simplification of the filing of an 
application by the assignee when an inventor cannot or will not execute 
the oath or declaration. The Office is not resubmitting an information 
collection package to OMB for its review and approval, because the 
changes in this rulemaking do not change patent fees or change the 
information collection requirements (the estimated number of 
respondents, time per response, total annual respondent burden hours, 
or total annual respondent cost burden) associated with the information 
collections approved under OMB Control Numbers 0651-0032 and 0651-0035.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall a person be subject to a penalty for failure 
to comply with, a collection of information subject to the requirements 
of the Paperwork Reduction Act, unless that collection of information 
displays a currently valid OMB control number.

[[Page 998]]

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Inventions and patents, 
Reporting and recordkeeping requirements, Small businesses.

37 CFR Part 3

    Administrative practice and procedure, Patents, Trademarks.

    For the reasons set forth in the preamble, 37 CFR parts 1 and 3 are 
proposed to be amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).

    2. Section 1.1 is amended by revising paragraph (e) to read as 
follows:


Sec.  1.1  Addresses for non-trademark correspondence with the United 
States Patent and Trademark Office.

* * * * *
    (e) Patent term extension. All applications for extension of patent 
term under 35 U.S.C. 156 and any communications relating thereto 
intended for the United States Patent and Trademark Office should be 
additionally marked ``Mail Stop Hatch-Waxman PTE.'' When appropriate, 
the communication should also be marked to the attention of a 
particular individual, such as where a decision has been rendered.
* * * * *
    3. Section 1.4 is amended by revising paragraph (e) to read as 
follows:


Sec.  1.4  Nature of correspondence and signature requirements.

* * * * *
    (e) Correspondence requiring a person's signature and relating to 
payment by credit card in patent cases or registration to practice 
before the Patent and Trademark Office in patent cases, enrollment and 
disciplinary investigations, or disciplinary proceedings must be 
submitted with an original handwritten signature personally signed in 
permanent dark ink or its equivalent by that person.
* * * * *
    4. Section 1.31 is revised to read as follows:


Sec.  1.31  Applicant may be represented by one or more patent 
practitioners or joint inventors.

    (a) An applicant for patent may file and prosecute his or her own 
case, or he or she may give a power of attorney to be represented by 
one or more patent practitioners or joint inventors, except that a 
juristic entity must be represented by a patent practitioner. 
Prosecution by a juristic entity is governed by Sec.  3.71(a), and the 
taking of action by any assignee is governed by Sec.  3.73.
    (b) The United States Patent and Trademark Office cannot aid in the 
selection of a patent practitioner.
    5. Section 1.32 is amended by adding new paragraphs (d) and (e) to 
read as follows:


Sec.  1.32  Power of attorney.

* * * * *
    (d) A power of attorney from a prior application for which benefit 
is claimed under 35 U.S.C. 120, 121, or 365(c) in a continuing 
application may have effect in the continuing application if the 
inventorship of the continuing application is the same as the prior 
application or one or more inventors from the prior application have 
been deleted in the continuing application, and if a copy of the power 
of attorney from the prior application is filed in the continuing 
application.
    (e) If a power of attorney has been granted by all of the inventors 
and not an assignee, the addition of an inventor pursuant to Sec.  1.48 
results in the loss of that power of attorney upon grant of the Sec.  
1.48 request, unless the added inventor provides a power of attorney 
consistent with the power of attorney provided by the other inventors. 
This provision does not preclude a practitioner from acting pursuant to 
Sec.  1.34, if applicable.
    6. Section 1.33 is amended by removing and reserving paragraph 
(b)(3), revising the introductory text of paragraph (a), and adding new 
paragraphs (f), (g), and (h) to read as follows:


Sec.  1.33  Correspondence respecting patent applications, 
reexamination proceedings, and other proceedings.

    (a) Correspondence address and daytime telephone number. When 
filing an application, a correspondence address must be set forth in 
either an application data sheet (Sec.  1.76), or elsewhere, in a 
clearly identifiable manner, in any paper submitted with an application 
filing. If no correspondence address is specified, the Office may treat 
the mailing address of the first named inventor (if provided, see 
Sec. Sec.  1.76 (b)(1) and 1.63 (c)(2)) as the correspondence address. 
The Office will direct, or otherwise make available, all notices, 
official letters, and other communications relating to the application 
to the person associated with the correspondence address. For 
correspondence submitted via the Office's electronic filing system, 
however, an electronic acknowledgment receipt will be sent to the 
submitter. The Office will generally not engage in double 
correspondence with an applicant and a patent practitioner, or with 
more than one patent practitioner, except as deemed necessary by the 
Director. If more than one correspondence address is specified in a 
single paper or in multiple papers submitted on one day, the Office 
will select one of the specified addresses for use as the 
correspondence address and, if given, may select the address associated 
with a Customer Number over a typed correspondence address. For the 
party to whom correspondence is to be addressed, a daytime telephone 
number should be supplied in a clearly identifiable manner and may be 
changed by any party who is authorized to change the correspondence 
address. The correspondence address may be changed as follows:
* * * * *
    (b) * * *
    (3) [Reserved]
* * * * *
    (f) An assignee may only conduct prosecution of an application in 
accordance with Sec. Sec.  1.31 and 3.71 of this chapter. Unless 
otherwise specified, all papers submitted on behalf of a juristic 
entity must be signed by a patent practitioner.
    (g) Where application papers from a prior application are used in a 
continuing application and the correspondence address was changed 
during the prosecution of the prior application, an application data 
sheet or separate paper identifying the updated correspondence address 
to be used for the continuing application must be submitted. Otherwise, 
the Office may not recognize the change of correspondence address 
effected during the prosecution of the prior application.
    (h) A patent practitioner acting in a representative capacity whose 
correspondence address is the correspondence address of record in an 
application may change the correspondence address after the patent has 
issued, provided that the change of correspondence address is 
accompanied by a statement that notice has been given to the patentee 
or owner.
    7. Section 1.41 is amended by revising paragraphs (a)(3), (a)(4) 
and (c) to read as follows:


Sec.  1.41  Applicant for patent.

    (a) * * *
    (3) In a nonprovisional application filed without an oath or 
declaration as prescribed by Sec.  1.63 or in a provisional

[[Page 999]]

application filed without a cover sheet as prescribed by Sec.  
1.51(c)(1), the name and residence of each person believed to be an 
actual inventor should be provided when the application papers pursuant 
to Sec.  1.53(b) or Sec.  1.53(c) are filed.
    (4) The inventorship of an international application entering the 
national stage under 35 U.S.C. 371 is that inventorship set forth in 
the first submission of an executed declaration under PCT Rule 4.17(iv) 
or oath or declaration under Sec.  1.497, except as provided in Sec.  
1.63(d). If neither an executed declaration under PCT Rule 4.17(iv) nor 
executed oath or declaration under Sec.  1.497 is filed during the 
pendency of the national stage application, the inventorship is that 
inventorship set forth in the international application, which includes 
any change effected under PCT Rule 92bis.
* * * * *
    (c) Any person authorized by the applicant may physically or 
electronically deliver an application for patent and related 
correspondence, including fees, to the Office on behalf of the inventor 
or inventors and provide a correspondence address pursuant to Sec.  
1.33(a), but an oath or declaration (Sec.  1.63) can only be made in 
accordance with Sec.  1.64 and amendments and other papers must be 
signed in accordance with Sec.  1.33(b).
* * * * *
    8. Section 1.42 is revised to read as follows:


Sec.  1.42  When the inventor is deceased or legally incapacitated.

    (a) In the case of the death or legal incapacity of the inventor, 
the legal representative (e.g., executor, administrator, guardian, or 
conservator) of the deceased or incapacitated inventor, the assignee, 
or a party to whom the inventor is under an obligation to assign the 
invention or party who otherwise shows sufficient proprietary interest 
in the matter may execute the oath or declaration under Sec.  1.63, 
provided that the oath or declaration complies with the requirements of 
Sec.  1.63(a) and (b) and identifies the inventor who is deceased or 
legally incapacitated. A party who shows sufficient proprietary 
interest in the matter executes the oath or declaration on behalf of 
the deceased or incapacitated inventor.
    (b) A party to whom the inventor is under an obligation to assign 
the invention or a party who otherwise has sufficient proprietary 
interest in the matter taking action under this section must do so by 
way of a petition that is accompanied by the fee set forth in Sec.  
1.17(g) and a showing, including proof of pertinent facts, either that:
    (1) The deceased or incapacitated inventor is under an obligation 
to assign the invention to the party; or
    (2) The party has sufficient proprietary interest in the matter to 
execute the oath or declaration pursuant to Sec.  1.63 on behalf of the 
deceased or incapacitated inventor and that such action is necessary to 
preserve the rights of the parties.
    (c) If the inventor dies during the time intervening between the 
filing of the application and the granting of a patent thereon, the 
letters patent may be issued to the legal representative or assignee 
upon proper intervention pursuant to this section.
    9. Section 1.43 is removed and reserved.


Sec.  1.43  [Reserved]

    10. Section 1.47 is revised to read as follows:


Sec.  1.47  When an inventor refuses to sign or cannot be reached.

    (a) If an inventor or legal representative thereof (Sec.  1.42) 
refuses to execute the oath or declaration under Sec.  1.63, or cannot 
be found or reached after diligent effort, the assignee of the 
nonsigning inventor, a party to whom the inventor is obligated to 
assign the invention, or a party who otherwise shows sufficient 
proprietary interest in the matter may execute the oath or declaration 
under Sec.  1.63. A party who shows sufficient proprietary interest in 
the matter executes the oath or declaration on behalf of the nonsigning 
inventor.
    (b) If a joint inventor or legal representative thereof (Sec.  
1.42) refuses to execute the oath or declaration under Sec.  1.63 or 
cannot be found or reached after diligent effort, the remaining 
inventor(s) may execute the oath or declaration under Sec.  1.63 on 
behalf of himself or herself and the nonsigning inventor.
    (c) Any oath or declaration executed pursuant to this section must 
comply with the requirements of Sec.  1.63(a) and (b) and be 
accompanied by a petition that:
    (1) Includes the fee set forth in Sec.  1.17(g);
    (2) Identifies the nonsigning inventor, and includes the last known 
address of the nonsigning inventor;
    (3) States either the inventor or legal representative cannot be 
reached after a diligent effort was made, or has refused to execute the 
oath or declaration under Sec.  1.63 when presented with a copy of the 
application papers, with proof of the pertinent facts; and
    (4) For a party to whom the nonsigning inventor is under an 
obligation to assign the invention, or has sufficient proprietary 
interest in the matter acting under paragraph (a) of this section, a 
showing, including proof of pertinent facts, either that:
    (i) The nonsigning inventor is under an obligation to assign the 
invention to the party; or
    (ii) The party has sufficient proprietary interest in the matter to 
execute the oath or declaration pursuant to Sec.  1.63 on behalf of the 
nonsigning inventor and that such action is necessary to preserve the 
rights of the parties.
    (d) The Office will publish notice of the filing of the application 
in the Official Gazette, and may send notice of filing of the 
application to the nonsigning inventor at the address(es) provided in 
the petition under this section. The Office may dispense with this 
notice provision in a continuing application, if notice regarding the 
filing of the prior application was given to the nonsigning 
inventor(s).
    (e) A nonsigning inventor or legal representative may subsequently 
join in the application by submitting an oath or declaration under 
Sec.  1.63. The submission of an oath or declaration by a nonsigning 
inventor or legal representative after the grant of a petition under 
this section will not permit the nonsigning inventor or legal 
representative to revoke or grant a power of attorney.
    11. Section 1.48 is amended by revising the section heading and 
adding new paragraph (k) to read as follows:


Sec.  1.48  Correction of inventorship in a patent application, other 
than a reissue application.

* * * * *
    (k) National stage application under 35 U.S.C. 371. The procedure 
set forth in paragraph (a) of this section for correcting an error in 
inventorship is also applicable to international applications entering 
the national stage under 35 U.S.C. 371 prior to becoming nonprovisional 
applications (Sec.  1.9(a)(3)), and to correct an error in the 
inventive entity set forth in an executed declaration submitted under 
PCT Rule 4.17(iv).
    12. Section 1.53 is amended by revising paragraph (f)(4) to read as 
follows:


Sec.  1.53  Application number, filing date, and completion of 
application.

* * * * *
    (f) * * *
    (4) This paragraph applies to continuation or divisional 
applications

[[Page 1000]]

under paragraphs (b) or (d) of this section and to continuation-in-part 
applications under paragraph (b) of this section. See Sec.  1.63(d) 
concerning the submission of a copy of the oath or declaration from the 
prior application for a continuing application under paragraph (b) of 
this section.
* * * * *
    13. Section 1.55 is amended by revising the introductory text of 
paragraph (a)(1)(i), the introductory text of paragraph (c), and 
paragraph (d)(1)(ii) to read as follows:


Sec.  1.55  Claim for foreign priority.

    (a) * * *
    (1)(i) In an original application filed under 35 U.S.C. 111(a), the 
claim for priority must be presented in an application data sheet 
(Sec.  1.76(b)(6)) or a supplemental application data sheet (Sec.  
1.76(c)) during the pendency of the application, and within the later 
of four months from the actual filing date of the application or 
sixteen months from the filing date of the prior foreign application. 
This time period is not extendable. The claim must identify the foreign 
application for which priority is claimed, as well as any foreign 
application for the same subject matter and having a filing date before 
that of the application for which priority is claimed, by specifying 
the application number, country (or intellectual property authority), 
day, month, and year of its filing. The time periods in this paragraph 
do not apply in an application under 35 U.S.C. 111(a) if the 
application is:
* * * * *
    (c) Unless such claim is accepted in accordance with the provisions 
of this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d) or 
365(a) not presented in an application data sheet (Sec.  1.76(b)(6)) or 
a supplemental application data sheet (Sec.  1.76(c)) within the time 
period provided by paragraph (a) of this section is considered to have 
been waived. If a claim for priority under 35 U.S.C. 119(a)-(d) or 
365(a) is presented after the time period provided by paragraph (a) of 
this section, the claim may be accepted if the claim identifying the 
prior foreign application by specifying its application number, country 
(or intellectual property authority), and the day, month, and year of 
its filing was unintentionally delayed. A petition to accept a delayed 
claim for priority under 35 U.S.C. 119(a)-(d) or 365(a) must be 
accompanied by:
* * * * *
    (d)(1) * * *
    (ii) The foreign application is identified in an application data 
sheet (Sec.  1.76(b)(6)) or a supplemental application data sheet 
(Sec.  1.76(c)); and
* * * * *
    14. Section 1.63 is revised to read as follows:


Sec.  1.63  Oath or declaration.

    (a) A nonprovisional application for patent filed under 35 U.S.C. 
111(a) or which entered the national stage under 35 U.S.C. 371 shall 
include, or be amended to include, an oath or declaration. The oath or 
declaration under this section must:
    (1) Be executed (i.e., signed) in accordance with either Sec.  1.66 
or Sec.  1.68;
    (2) Identify each inventor by his or her full name without any 
abbreviation (except for a middle initial);
    (3) Identify the application to which it is directed;
    (4) Include a statement that the person executing the oath or 
declaration believes the named inventor or joint inventors to be the 
original inventor or original joint inventors of the claimed invention 
in the application for which the oath or declaration is being 
submitted;
    (5) State that the application was made or was authorized to be 
made by the inventor;
    (6) State that the person making the oath or declaration has 
reviewed and understands the contents of the application for which the 
oath or declaration is being submitted, including the claims, as 
amended by any amendment specifically referred to in the oath or 
declaration; and
    (7) State that the person making the oath or declaration 
acknowledges the duty to disclose to the Office all information known 
to the person to be material to patentability as defined in Sec.  1.56.
    (b) Unless such information is supplied on an application data 
sheet in accordance with Sec.  1.76, the oath or declaration must also 
identify for each inventor a mailing address where the inventor 
customarily receives mail, and residence, if the inventor lives at a 
location different from the mailing address.
    (c)(1) An assignment may also include the oath or declaration 
required by this section if:
    (i) The assignment contains the information and statements required 
under paragraphs (a) and (b) of this section; and
    (ii) A copy of the assignment is filed in the application and 
recorded as provided for in part 3 of this chapter.
    (2) Any reference to an oath or declaration under Sec.  1.63 
includes an assignment as provided for in this paragraph.
    (d)(1) A newly executed inventor oath or declaration under Sec.  
1.63 is not required under Sec.  1.51(b)(2) and Sec.  1.53(f) or Sec.  
1.497(a) in an application that claims the benefit under 35 U.S.C. 120, 
121, or 365(c) in compliance with Sec.  1.78 of an earlier-filed 
application, provided that:
    (i) An executed oath or declaration in compliance with this section 
was filed in the earlier-filed application;
    (ii) A copy of such oath or declaration, showing the signature or 
an indication thereon that it was executed, is submitted in the 
continuing application; and
    (iii) Any new inventors named in the continuing application provide 
an executed oath or declaration in compliance with this section.
    (2) If applicable, the copy of the executed oath or declaration 
submitted under this paragraph must be accompanied by a statement 
signed pursuant to Sec.  1.33(b) requesting the deletion of the name or 
names of the person or persons who are not inventors in the continuing 
application.
    (3) If the earlier-filed application has been accorded status via a 
petition under Sec.  1.42 or Sec.  1.47, the copy of the executed oath 
or declaration must be accompanied by a copy of the decision granting 
the petition in the earlier-filed application, unless all inventors or 
legal representatives subsequently joined in the earlier-filed 
application. If one or more nonsigning inventor(s) or legal 
representative(s) subsequently joined in the earlier-filed application, 
the copy of the executed oath or declaration must be accompanied by a 
copy of the executed oath or declaration filed by the inventor or legal 
representative to join in the application.
    (e) An oath or declaration filed at any time pursuant to 35 U.S.C. 
115(h)(1) will be placed in the file record of the application or 
patent, but may not be reviewed by the Office. Any request for 
correction of the named inventorship must comply with Sec.  1.48 in an 
application and Sec.  1.324 in a patent.
    15. Section 1.64 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.64  Person making oath or declaration.

* * * * *
    (b) If the person making the oath or declaration or any 
supplemental oath or declaration is not the inventor (Sec. Sec.  1.42, 
1.47, or 1.67), the oath or declaration shall state the relationship of 
the person to the inventor, and, upon information and belief, the facts 
which the inventor is required to state. If the person signing the oath 
or declaration is the legal representative of a deceased or legally 
incapacitated inventor, the oath or

[[Page 1001]]

declaration shall also state that the person is a legal representative 
and, unless such information is supplied on an application data sheet 
in accordance with Sec.  1.76, the residence and mailing address of the 
legal representative.
    16. Section 1.67 is revised to read as follows:


Sec.  1.67  Noncompliant oath or declaration.

    (a) Where an oath or declaration does not comply with a requirement 
of 35 U.S.C. 115, or a requirement of Sec.  1.63 or 1.162, the Office 
may require, or the inventors and applicants may submit, an oath or 
declaration meeting the requirements of Sec.  1.63 or Sec.  1.162 to 
correct any deficiencies or inaccuracies present in the earlier-filed 
oath or declaration.
    (1) Deficiencies or inaccuracies relating to all the inventors or 
applicants (Sec.  1.42 or Sec.  1.47) may be corrected with an oath or 
declaration in compliance with 35 U.S.C. 115 and Sec.  1.63 or 1.162 
signed by all the inventors or applicants.
    (2) Deficiencies or inaccuracies relating to fewer than all of the 
inventor(s) or applicant(s) (Sec.  1.42 or Sec.  1.47) may be corrected 
with an oath or declaration in compliance with 35 U.S.C. 115 and Sec.  
1.63 or 1.162 identifying the entire inventive entity but signed only 
by the inventor(s) or applicant(s) to whom the error or deficiency 
relates.
    (3) Deficiencies or inaccuracies due to the failure to meet the 
requirements of Sec.  1.63(b) in an oath or declaration may be 
corrected with a supplemental application data sheet in accordance with 
Sec.  1.76.
    (b) No new matter may be introduced into a nonprovisional 
application after its filing date, even if an oath or declaration is 
filed to correct deficiencies or inaccuracies present in the earlier-
filed oath or declaration.
    17. Section 1.76 is amended by revising paragraphs (a), (c), and 
(d)(1) to read as follows:


Sec.  1.76  Application data sheet.

    (a) Application data sheet: An application data sheet is a sheet or 
sheets, that may be submitted in a provisional application, a 
nonprovisional application, or an international application entering 
the national stage under 35 U.S.C. 371, and must be submitted to claim 
priority to or the benefit of a prior-filed application under 35 U.S.C. 
119, 120, 121, or 365. An application data sheet contains bibliographic 
data, arranged in a format specified by the Office. An application data 
sheet must be titled ``Application Data Sheet'' and must contain all of 
the section headings listed in paragraph (b) of this section, with any 
appropriate data for each section heading. If an application data sheet 
is provided, the application data sheet is part of the provisional or 
nonprovisional application for which it has been submitted.
* * * * *
    (c) Supplemental application data sheets. Supplemental application 
data sheets:
    (1) May be supplied only after filing of the application, 
regardless of whether an application data sheet under paragraph (a) of 
this section was submitted on filing, and until payment of the issue 
fee, either to correct or update information in a previously submitted 
application data sheet, or an oath or declaration under Sec.  1.63 or 
Sec.  1.67, except that inventorship changes are governed by Sec.  
1.48, and correspondence changes are governed by Sec.  1.33(a); and
    (2) Must be titled ``Supplemental Application Data Sheet,'' include 
all of the section headings listed in paragraph (b) of this section, 
include all appropriate data for each section heading, be signed in 
accordance with Sec.  1.33(b), and identify the information that is 
being changed, with underlining for insertions of text, and strike-
through or brackets for deletions of text.
    (d) * * *
    (1) The most recent submission will govern with respect to 
inconsistencies as between the information provided in an application 
data sheet, an amendment to the specification, a designation of a 
correspondence address, or by a Sec.  1.63 or Sec.  1.67 oath or 
declaration, except that the most recent oath or declaration (Sec.  
1.63 or Sec.  1.67) will govern with respect to the naming of inventors 
(Sec.  1.41(a)(1)), and that the most recent application data sheet 
will govern with respect to foreign priority (Sec.  1.55) or domestic 
benefit (Sec.  1.78) claims;
* * * * *
    18. Section 1.78 is amended by revising paragraphs (a)(2)(iii) and 
(a)(5)(iii) to read as follows:


Sec.  1.78  Claiming benefit of earlier filing date and cross-
references to other applications.

    (a) * * *
    (2) * * *
    (iii) If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be included 
in an application data sheet (Sec.  1.76(b)(5)) or a supplemental 
application data sheet (Sec.  1.76(c)).
* * * * *
    (5) * * *
    (iii) If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be included 
in an application data sheet (Sec.  1.76(b)(5)) or a supplemental 
application data sheet (Sec.  1.76(c)).
* * * * *
    19. Section 1.172 is revised to read as follows:


Sec.  1.172  Applicants.

    (a) A reissue applicant must submit an oath or declaration 
accompanied by the written consent of all assignees, if any, owning an 
undivided interest in the patent.
    (b) Oath or declaration:
    (1) Nonbroadening reissues: If the application does not seek to 
enlarge the scope of the claims of the original patent, the oath or 
declaration must be signed by:
    (i) The inventor or inventors, including the legal representatives 
of deceased or legally incapacitated inventors or a Sec.  1.47 
applicant for a nonsigning inventor;
    (ii) An assignee of the entire interest; or
    (iii) All partial assignees together with all inventors who have 
not assigned their rights, including the legal representatives of 
deceased or legally incapacitated inventors or a Sec.  1.47 applicant 
for a nonsigning inventor.
    (2) Broadening reissues: If the applicant seeks to enlarge the 
scope of the claims of the original patent, the oath or declaration 
must be signed by:
    (i) The inventor or inventors, including the legal representatives 
of deceased or legally incapacitated inventors or a Sec.  1.47 
applicant for a nonsigning inventor; or
    (ii) For a reissue application filed on or after September 16, 
2012, the assignee of the entire interest where the application for the 
original patent was filed by the assignee of the entire interest (i.e., 
the oath or declaration was executed by the assignee under Sec.  1.42 
or Sec.  1.47).
    (c) Assignee ownership: All assignees consenting to the reissue 
must establish their ownership in the patent by filing in the reissue 
application a submission in accordance with the provisions of Sec.  
3.73(b).
    (d) A reissue will be granted to the original patentee, his legal 
representatives or assigns as the interest may appear.
    20. Section 1.175 is amended by revising paragraphs (a), (b), (c), 
and (e), and adding paragraph (f), to read as follows:


Sec.  1.175  Reissue oath or declaration.

    (a) The reissue oath or declaration, in addition to complying with 
the

[[Page 1002]]

requirements of Sec.  1.63, must also specifically identify at least 
one error pursuant to 35 U.S.C. 251 being relied upon as the basis for 
reissue and state that the applicant believes the original patent to be 
wholly or partly inoperative or invalid by reason of each one of the 
following reasons that are applicable:
    (1) A defective specification or drawing;
    (2) The patentee claiming more than the patentee had the right to 
claim in the patent; or
    (3) The patentee claiming less than the patentee had the right to 
claim in the patent and identify a broadened claim and a broadened 
portion of the specification if a change thereto is the basis for the 
claim broadening;
    (b) A claim broadened in any respect must be treated and identified 
as a broadened claim pursuant to paragraph (a)(3) of this section.
    (c) Where all errors previously identified in the reissue oath or 
declaration pursuant to paragraph (a) of this section are no longer 
being relied upon as the basis for reissue, a new error currently being 
relied upon as the basis for reissue must be identified in a reissue 
oath or declaration under this section, which statement need only 
address the new error.
* * * * *
    (e) Continuing reissue applications:
    (1) Where a continuing reissue application replaces a prior reissue 
application, the requirement for a reissue oath or declaration pursuant 
to Sec.  1.172 may be satisfied by a copy of the reissue oath or 
declaration from the prior reissue application it replaces.
    (2) Where a continuing reissue application does not replace a prior 
reissue application, the requirement for a reissue oath or declaration 
pursuant to Sec.  1.172 may be satisfied by:
    (i) A newly executed reissue oath or declaration that identifies at 
least one error in the original patent which has not been corrected by 
a prior reissue application; or
    (ii) A copy of the reissue oath or declaration from a prior reissue 
application within the chain of the benefit claim, accompanied by a 
statement that explains either that an identified error was not 
corrected in a prior reissue application, or how an identified error is 
currently being corrected in a manner different than in a prior reissue 
application.
    (f) A reissue oath or declaration filed at any time pursuant to 35 
U.S.C. 115(h)(1) will be placed in the file record of the reissue 
application, but may not be reviewed by the Office.
    21. Section 1.311 is amended by adding new paragraph (c) to read as 
follows:


Sec.  1.311  Notice of allowance.

* * * * *
    (c) Where an assignee, person to whom the inventor is under an 
obligation to assign the invention, or person who otherwise shows 
sufficient proprietary interest in the matter has filed an application 
under Sec. Sec.  1.42, or 1.47, the applicant must notify the Office of 
any change in ownership of the application no later than payment of the 
issue fee. The Office will treat the absence of such a notice as an 
indication that there has been no change in ownership of the 
application.
    22. Section 1.497 is revised to read as follows:


Sec.  1.497  Oath or declaration under 35 U.S.C. 371(c)(4).

    (a) When an applicant of an international application desires to 
enter the national stage under 35 U.S.C. 371 pursuant to Sec.  1.495, 
and a declaration in compliance with this section has not been 
previously submitted in the international application under PCT Rule 
4.17(iv) within the time limits provided for in PCT Rule 26ter.1, the 
applicant must file an oath or declaration in accordance with Sec.  
1.63.
    (b) An oath or declaration will be accepted as complying with 35 
U.S.C. 371(c)(4) and Sec.  1.495(c) for purposes of entering the 
national stage under 35 U.S.C. 371 if it:
    (1) Is executed in accordance with either Sec. Sec.  1.66 or 1.68;
    (2) Identifies the application to which it is directed;
    (3) Identifies each inventor;
    (4) States that the person executing the oath or declaration 
believes the named inventor or inventors to be the original inventor or 
an original joint inventor of a claimed invention in the application;
    (5) States that the application was made or was authorized to be 
made by the inventor; and
    (6) Where the oath or declaration is not made by the inventor, 
complies with the applicable requirements of Sec. Sec.  1.42 and 1.47.
    (c) If the oath or declaration meeting the requirements of Sec.  
1.497(b) does not also meet the requirements of Sec.  1.63, an oath or 
declaration in compliance with Sec.  1.63 or a supplemental application 
data sheet will be required in accordance with Sec.  1.67.

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

    23. The authority citation for part 3 continues to read as follows:

    Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).

    24. Section 3.31 is amended by adding new paragraph (h) to read as 
follows:


Sec.  3.31  Cover sheet content.

* * * * *
    (h) The assignment cover sheet required by Sec.  3.28 must contain 
a conspicuous indication of an intent to utilize the assignment as the 
required oath or declaration under Sec.  1.63 of this chapter.
    25. Section 3.71 is amended by revising paragraph (a) to read as 
follows:


Sec.  3.71  Prosecution by assignee.

    (a) Patents--conducting of prosecution on behalf of assignee. 
Subject to the requirements of Sec. Sec.  1.31 and 1.33(f), one or more 
assignees as defined in paragraph (b) of this section may, after 
becoming of record pursuant to paragraph (c) of this section, conduct 
prosecution of a national patent application or a reexamination 
proceeding to the exclusion of either the inventive entity or the 
assignee(s) previously entitled to conduct prosecution. Conflicts 
between purported assignees are handled in accordance with Sec.  
3.73(c)(4).
* * * * *
    26. Section 3.73 is amended by revising the section heading, 
paragraphs (b)(2)(ii) and (c)(2), and adding new (b)(2)(iii), (b)(3), 
(c)(3) and (c)(4) to read as follows:


Sec.  3.73  Establishing right of assignee to request or take action in 
a trademark or patent matter.

* * * * *
    (b) * * *
    (2) * * *
    (ii) Being signed by a person having apparent authority to sign on 
behalf of the assignee; or
    (iii) Being signed by a patent practitioner of record pursuant to 
Sec.  1.32 of this chapter.
    (3) In any one application or proceeding, a subsequent statement 
must provide a complete chain of title.
    (c) * * *
    (2) If the submission is by an assignee of less than the entire 
right, title, and interest (e.g., more than one assignee exists), the 
Office may refuse to accept the submission as an establishment of 
ownership unless:
    (i) Each assignee establishes the extent (by percentage) of its 
ownership

[[Page 1003]]

interest, so as to account for the entire right, title, and interest in 
the application or patent by all parties including inventors; or
    (ii) Each assignee submits a statement identifying the parties 
including inventors who together own the entire right, title, and 
interest and stating that all the identified parties own the entire 
right, title, and interest.
    (3) A statement under paragraph (b) of this section from a prior 
application for which benefit is claimed under 35 U.S.C. 120, 121, or 
365(c) in a continuing application may have effect in the continuing 
application if the inventorship of the continuing application is the 
same as the prior application or one or more inventors from the prior 
application have been deleted in the continuing application, and a copy 
of the statement under paragraph (b) of this section from the prior 
application is filed in the continuing application.
    (4) Where two or more purported assignees file conflicting 
statements under paragraph (b) of this section, the Director will 
determine which, if any, purported assignee will be permitted to 
control prosecution of the application.

    Dated: December 30, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-33815 Filed 1-5-12; 8:45 am]
BILLING CODE 3510-16-P