[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
-----------------------------------------------------------------------
United States Patent and Trademark Office
-----------------------------------------------------------------------
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]]
-----------------------------------------------------------------------
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.
-----------------------------------------------------------------------
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