CHANGES TO IMPLEMENT THE INVENTOR S OATH OR DECLARATION PROVISIONS OF

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1 CHANGES TO IMPLEMENT THE INVENTOR S OATH OR DECLARATION PROVISIONS OF THE LEAHY-SMITH AMERICA INVENTS ACT (AIA); FREQUENTLY ASKED QUESTIONS 1 EFFECTIVE DATE Q.1.1: What is the effective date for the inventor s oath or declaration provisions in the AIA? The effective date for the inventor s oath or declaration provisions in the AIA is September 16, Section 4(e) of the AIA provides that the amendments made by Section 4, 35 U.S.C. 115, shall take effect on, and shall apply to any patent application filed on or after, September 16, Q.1.2: Is the date that the oath or declaration is executed or the date of any priority claim relevant under the new inventor s oath or declaration provisions? No. The important issue is the date the application is filed. For applications filed prior to September 16, 2012, any oath or declaration filed before, on, or after September 16, 2012, must comply with the oath and declaration rules in effect prior to September 16, 2012, whereas any oath or declaration submitted in an application filed on or after September 16, 2012, must comply the requirements of 35 U.S.C. 115, as amended by the AIA, irrespective of the date that the oath or declaration was executed, and without regard to any priority claim. 1 Oblon Spivak, 2012

2 Q.1.3: Is a new oath or declaration required for continuing applications filed on or after September 16, 2012, but claiming the benefit of an application filed before September 16, 2012? Yes. Although 35 U.S.C. 115(g)(1)(A) provides an exception to the requirement for a newly executed oath or declaration in continuing applications, this exception is only applicable where the oath or declaration in the earlier-filed application meets the requirements of amended 35 U.S.C. 115(a), which must include the new statutorily mandated statements required under 35 U.S.C. 115(b) (discussed below; Q.2.4). Therefore, Applicants are only required to submit a copy of the inventor s oath/declaration from the parent application, where the parent was filed on or after September 16, Q.1.4: Is a new inventor s oath or declaration required for an international application entering the national stage under 35 U.S.C. 371 on or after September 16, 2012? No. The U.S. filing date of an international application designating the United States is its international filing date under article 11 of the PCT. See 35 U.S.C. 363; PCT Article 11(3). Accordingly, only national stage applications with an international filing date on or after September 16, 2012, are required to submit a new inventor s oath or declaration that meets the requirements of 35 U.S.C. 115, as amended by the AIA. Q.1.5: If an inventor s oath or declaration is filed on or after September 16, 2012, along with a PCT request under PCT Rule 4.17, is the inventor s oath or declaration required to comply with the requirements of 35 U.S.C. 115, as amended by the AIA? Yes. Although an inventor s oath or declaration is not required to be submitted as part of a PCT application in the international stage, it is required to fulfill the requirements of 35 U.S.C.

3 371(c)(4). However, it may be desirable to obtain and file any required inventors declarations at the time of filing the PCT application and include it with the request under PCT Rule 4.17(iv). Be aware though that since the current language of the PCT Rule 4.17(iv) declaration posted on the WIPO website will no longer comply with the new requirements under the AIA for international applications filed on or after September 16, 2012, any inventor s oath or declarations filed with a PCT request on or after September 16, 2012, must comply with the new AIA requirements. It is expected that the International Bureau of WIPO will be updating the PCT Rule 4.17(iv) declaration to comply with the AIA requirements. INVENTOR S OATH OR DECLARATION Q.2.1: Under the AIA, is an inventor s oath or declaration required if a company files as the assignee? Yes. 35 U.S.C. 115 requires for each inventor: (i) an oath or declaration by the inventor; (ii) an assignment containing the new statutorily mandated statements for an oath or declaration by the inventor (assignment-statements); or (iii) a substitute statement with respect to the inventor. Q.2.2: Under the former 35 U.S.C. 115, an applicant was required to state that he believes himself or herself to be the original and first inventor, and to state his or her country of citizenship in the inventor s oath or declaration. Are these statements required under the AIA? No, the AIA eliminated these requirements from 35 U.S.C See 37 C.F.R. 1.63(a)(4) (eliminating the requirement that the person executing the oath or declaration state that he or she is believed to be the first inventor, since this statement is inconsistent with a first inventor to

4 file system); Id. 1.63(a)(4); Id. 1.63(a)(3) (eliminating the requirement to identify the country of citizenship for each inventor). Q.2.3: What other inventor s oath or declaration requirements are eliminated under the final rules? The inventor s oath or declaration is no longer required to include: the names of every inventor; each inventor s citizenship; or foreign priority claims. Notably, foreign priority claims must now be provided in an application data sheet. Q.2.4: Under 35 U.S.C. 115, as amended by the AIA, what must be included in the inventor s oath and declaration? Amended 35 U.S.C. 115 provides that an oath or declaration under 35 U.S.C. 115(a) must contain: (i) a statement that the person executing the oath or declaration believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application; (ii) a statement that the application was made or was authorized to be made by the affiant or declarant; and (iii) an acknowledgment that any willful false statement made in the declaration or statement is punishable by fine or imprisonment of not more than 5 years, or both 35 U.S.C. 115(b) and (i). In addition, 37 C.F.R. 1.63(a) provides that an oath or declaration must identify: (iii) the inventor or joint inventor executing the oath or declaration by his or her legal name; and (iv) the application to which it is directed. Finally, unless such information is supplied in an application data sheet, 37 C.F.R. 1.63(b) requires the oath or declaration to identify: each inventor by his or her legal name, a mailing

5 address where each inventor customarily receives mail, and a residence for each inventor that lives at a location different from where the inventor customarily receives mail. Q.2.5: If an applicant files a continuation-in-part (CIP) application after September 16, 2012, naming inventors X and Y, and the parent application named only inventor X, can the applicant use a copy of a declaration in the CIP application that was signed by inventor X and filed in the parent application? Yes, if the declaration filed in the parent application complies with new 35 U.S.C. 115 requirements and a signed application data sheet (ADS) is filed in the CIP application (either before or with the copy of the parent declaration) naming the inventive entity (X and Y). An oath or declaration signed by the additional inventor Y in the CIP application is also required. But as long as a signed ADS was filed naming the inventive entity (X and Y) in the CIP application, the oath or declaration executed by the additional inventor Y in the CIP application would not need to identify inventor X. Q.2.6: Is there an age requirement for executing an oath or declaration? No, there is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing. See 37 C.F.R. 1.63(c). TIMING OF INVENTOR S OATH OR DECLARATION Q.3.1: When is an applicant required to submit the inventor s oath or declaration under the new rules?

6 An applicant may submit the inventor s oath or declaration on filing of the application, or an applicant may postpone submitting the inventor s oath or declaration until the Office issues a Notice of Allowability, provided that the applicant files a signed application data sheet (ADS) identifying the inventive entity. However, the Office imposes a surcharge under 37 C.F.R. 116(f) (currently $ 130; see also Q.3.6), for submitting an oath or declaration after the application filing date. Q.3.2: Under the former rules, an inventor s oath or declaration was required for a complete application. Does this change under the new rules? Yes, if an application contains the applicable filing fees, the surcharge required by 37 C.F.R. 1.16(f), and a signed ADS providing the information required by 37 C.F.R. 1.53(f)(3)(i), but does not include the inventor s oath or declaration, the Office will no longer issue a Notice to File Missing Parts (Notice) requiring the applicant to file the inventor s oath or declaration. However, if an application does not contain an inventor s oath or declaration or a signed ADS, the Office will issue the Notice giving the applicant a time period (usually two months) within which to file the signed ADS or the inventor s oath or declaration to avoid abandonment. In either case, the inventor s oath or declaration will not be required within the period for reply to the Notice if the applicant provides a signed ADS within the period for reply to the Notice. Q.3.3: What if an ADS is submitted, but the ADS is not signed? An ADS must be signed by a registered practitioner. An unsigned application data sheet is treated as only an application transmittal letter. 37 C.F.R. 1.76(e). Thus, an unsigned ADS will

7 not be effective to provide the name of the inventor for any invention claimed in the application, to make a claim to priority of a foreign application, or make a claim to the benefit of a prior-filed domestic application. See 37 C.F.R. 1.41(b); 1.55(a)(1)(i), (c) and (d)(1)(ii); and 1.78(a)(2)(iii) and (a)(5)(iii). Q.3.4: In order to postpone filing the inventor s oath or declaration, what must be included in the ADS under 37 C.F.R. 1.53(f)(3)(i)? Section 1.53(f)(3)(i) requires that the application data sheet identify: (1) each inventor by his or her legal name; (2) a mailing address where each inventor customarily receives mail; and (3) a residence address for each inventor that lives at a location different from where the inventor customarily receives mail. See 37 C.F.R. 1.53(f)(3)(i); 1.495(c)(3)(i). Q.3.5: If an application is filed with a signed ADS, what are the timing requirements for filing the inventor s oath or declaration or a substitute statement? Where the inventor s oath or declaration has not been submitted at the time that the application is otherwise in condition for allowance, the Office will send a Notice of Allowability giving the applicant three months to file an oath or declaration in compliance with 37 C.F.R. 1.63, or substitute statement in compliance with 37 C.F.R. 1.64, executed by or with respect to each actual inventor, to avoid abandonment. This three-month time period is not extendable under 37 C.F.R (a).

8 Q.3.6: Is there an additional fee for postponing the filing of the inventor s oath or declaration? The Office intends to continue requiring a surcharge (currently $130) to recover the cost of the special processing and additional notices for original (non-reissue) applications that are not complete on filing as permitted by 35 U.S.C. 111(a)(3). See 37 C.F.R. 116(f). If the applicant, however, provides a signed application data sheet providing the name, residence, and mailing address of each inventor, the Office will not require any additional fee beyond the surcharge simply to postpone filing the inventor s oath or declaration until the application is otherwise in condition for allowance. Q.3.7: Are there negative consequences for postponing the filing of the inventor s oath or declaration? Yes. The patent term adjustment (PTA) that accrues after the fourteen-month time frame provided under 35 U.S.C. 154(b)(1)(A)(i) for issuing an Office action or notice of allowance is measured from- the date on which an application was filed under section 111(a); or the date on which an international application fulfilled the requirements of section 371. The Office is changing its rules to provide that a PCT international application enters the national stage when the applicant files the fee required by 35 U.S.C. 371(c)(1), and the documents required by 35 U.S.C. 371(c)(2) (a copy and English translation of the international application unless not required) within the period set in 37 C.F.R However, any PTA accrues from the date on which an international application fulfilled the requirements of section 371, which further includes filing the inventor s oath or declaration. See 35 U.S.C. 371(c)(4).

9 Therefore, postponing the filing of the inventor s oath or declaration may prevent accrual of PTA. For applications filed under 35 U.S.C 111(a), the fourteen-month time frame for accruing PTA is measured from the filing date of the application. However, the Office is proposing changes to the PTA provisions of 37 CFR (circumstances that constitute a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application, and which result in a reduction of patent term adjustment) to prevent applicant delays from accruing PTA. ASSIGNEE FILING Q.4.1: Can a company, as the assignee, file a patent application for an invention on behalf of the company rather than on behalf of the inventor? Yes, under 35 U.S.C. 118, as amended by the AIA, an assignee, an obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter may make an application as the applicant. See 37 C.F.R. 1.46(a). Thus, applicant is no longer required to be the inventors. However, the inventor must still execute an oath or declaration except under limited circumstances. Id. 1.46(d) and 1.63(a). Q.4.2: What are the advantages and disadvantages of filing in the name of the assignee? There are several advantages to a company filing an application as the applicant. For instance, under the revised power of attorney provisions, when an assignee files as the applicant, the Office will not accept a power of attorney from the inventor. Thus, the power of attorney filed by the assignee controls.

10 Additionally, in continuing applications, assignees are permitted to provide a copy of the power of attorney rather then granting a new power of attorney even when a new inventor is added as long as the newly added inventor has assigned, or is under an obligation to assign, to the same assignee and the assignment is recorded at the Office. In contrast, when the power of attorney was granted by the originally named inventive entity, i.e., the inventor in the prior-filed application, and an added inventor pursuant to 37 C.F.R (request to correct or change inventorship) does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the 1.48 request. A negative consequence of a company filing as an applicant is that a juristic entity, e.g., an organizational assignee, is not permitted to prosecute patent applications before the Office pro se. Instead, corporations or other non-human entities must be represented by a patent practitioner. See 37 C.F.R. 1.33(b)(3) Q.4.3: Who may file a substitute statement in lieu of an inventor s oath/declaration if such a statement is permitted in a patent application? Any of the following entities may file a substitute statement on behalf of an inventor: (i) an inventor s legal representative; (ii) an assignee; (iii) a party to whom the inventor is under an obligation to assign; or (iv) a party who otherwise shows sufficient proprietary interest in the claimed invention.

11 Q.4.4: Under what circumstances can an assignee, an obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter execute a substitute statement in lieu of filing an inventor s oath or declaration? An assignee, an obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter oath or declaration by an inventor is permitted to execute a substitute statement when the inventor is: (i) deceased, (ii) legally incapacitated; (iii) unable to be found or reached after diligent effort; or (iv) under an obligation to assign the invention but has refused to execute an oath or declaration. See 35 U.S.C. 115(d)(2); 37 C.F.R. 1.64(a). Q.4.5: What are the requirements for filing a substitute statement in lieu of an executed oath or declaration from an inventor? Any substitute statement must identify the following: (i) the circumstances permitting the person to execute the substitute statement in lieu of an oath or declaration, e.g., whether the nonsigning inventor cannot be reached after a diligent effort was made, or has refused to execute the oath or declaration; (ii) the person executing the substitute statement with respect to the nonsigning inventor and the relationship of such person to the nonsigning inventor; and (iii) the last known address of the nonsigning inventor. See 35 U.S.C. 115 (d)(3); 37 C.F.R Q.4.6: Under the current law, a person who otherwise shows sufficient proprietary interest is permitted to make an application for the inventor upon proof that the inventor refused to execute an application or could not be found or reached after diligent effort, and showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage. Does this standard change under the AIA?

12 Yes, under 35 U.S.C. 118, as amended by the AIA, the standard for filing on behalf of an inventor only requires showing that such action is appropriate to preserve the rights of the parties. See 35 U.S.C COMBINED INVENTOR S OATH OR DECLARATION AND ASSIGNMENT Q.5.1: Can an assignment document contain the statements required to be included in an inventor s oath or declaration? Yes, an assignment may include the statements required in an oath or declaration. In such case, the applicant may file a combined inventor s oath or declaration and assignment document in the Office. See 35 U.S.C. 115(e); 37 C.F.R. 1.63(e). Q.5.2: What must a combined oath or declaration and assignment include? An assignment may serve as an oath or declaration if the assignment as executed (i) includes the information and statements required under 37 C.F.R. 1.63(a) and (b), and (ii) a copy of the assignment is recorded as provided for in 37 C.F.R. part 3. However, any combined oath or declaration and assignment is required is to include a conspicuous indication, e.g., a check-box on the assignment cover sheet, of an intent to utilize the assignment as the required oath or declaration under See 37 C.F.R Q.5.3: Is additional fee required to submit a combined oath or declaration and assignment? No, but the Office has cautioned that the failure to include a conspicuous indication on the assignment cover sheet will result in a Notice to File Missing Parts of Nonprovisional

13 Application (Notice), which will require an applicant to submit a copy of the assignment to reply to the Notice as well as a surcharge for the late submission of the inventor s oath or declaration. FOREIGN PRIORITY AND DOMESTIC BENEFIT CLAIMS Q.6.1: Is an application data sheet (ADS) required if there are foreign priority and/or domestic benefit claims? Yes, under the final rules, a benefit claim to a prior-filed nonprovisional application or international application designating the U.S. by a nonprovisional application must be identified in the ADS. See 37 C.F.R. 1.55, 1.76(a), Q.6.2: If the foreign or domestic benefit claim in an ADS is inconsistent with other documents, which document controls? Generally, the most recent submission will govern with respect to inconsistencies provided in an ADS, a designation of a correspondence address, or by the inventor s oath or declaration. However, with respect to foreign priority ( 1.55) or domestic benefit ( 1.78) claims the most recent ADS controls. See 37 C.F.R. 1.76(d)(1) (eliminating the reference to an amendment to the specification as governing with respect to inconsistencies in view of the changes to 1.78). POWER OF ATTORNEY Q.7.1: What is a power of attorney? A power of attorney is defined as a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on the principal s behalf. 37 C.F.R.

14 1.32(a)(2). Here, principal means the applicant ( 1.42) for an application for patent and the patent owner for a patent. 37 C.F.R. 1.32(a)(3). Q.7.2: What must be included in a power of attorney under the new rules? Under 37 C.F.R. 1.32(b), a power of attorney must: (1) be in writing; (2) name one or more representatives; (3) give the representative power to act on behalf of the principal; and (4) be signed by the applicant for patent ( 1.42) or the patent owner. Q.7.3: Are applicants required to file new a power of attorney in a continuing application? No. Under 37 C.F.R. 1.32(d), a power of attorney from an earlier-filed 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 a copy of the power of attorney from the earlier-filed application is filed in the continuing application unless: (1) the power of attorney was granted by the inventor; and (2) the continuing application names an inventor who was not named as an inventor in the prior application. Q.7.4: If a company, as an assignee, grants a power of attorney and files a continuing application adding a new inventor, is a new power of attorney required? No. Here, it is important to note the distinction between a power of attorney granted by an inventor versus a power of attorney granted by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter C.F.R. 1.42(a) (defining applicant as an inventor, all joint inventors, or the person applying for a patent under 37 C.F.R (the legal representative of a deceased or incapacitated inventor), 1.45 (all or fewer joint

15 A new power of attorney is not required for a newly added inventor when the assignee (rather than the inventive entity) grants the power of attorney and the newly added inventor has assigned, or is under an obligation to assign, to the same assignee and the assignment is recorded at the Office. See 37 C.F.R. 1.32(d). However, when the power of attorney was granted by the originally named inventive entity, i.e., the inventor in the prior-filed application, and an added inventor pursuant to 37 C.F.R (request to correct or change inventorship) does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the 1.48 request. See 37 C.F.R. 1.32(e). Q.7.5: If a nonsigning inventor subsequently joins in the application by submitting an oath or declaration, can the previous nonsigning inventor revoke or grant a power of attorney? No. When a nonsigning inventor or legal representative subsequently submits an oath or declaration under 37 C.F.R. 1.63, the oath or declaration does not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney. See 37 C.F.R. 1.64(f). Q.7.6: Prior to September 16, 2012, an assignee was required to proceed via 37 C.F.R and 3.73 to establish ownership of the application to be able to grant a power of attorney to prosecute the application. Is this still required for applications filed on or after September 16, 2012, if the assignee files the application as the applicant? inventors), or 1.46 (an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter).

16 No, where the assignee is the applicant, the assignee may appoint a power of attorney to prosecute the application without having to comply with 3.71 and FORMS Q.8.1: Can I continue to use the same inventor declaration form after the effective date of the inventor s oath or declaration provision on September 16, 2012? No, unless the inventor s oath or declaration already included the new statutorily-mandated language that must be included in the inventor oath or declaration after September 16, That is, an inventor s oath or declaration can only be used if it includes: (1) a statement that the application was made or authorized to be made by the affiant or declarant, and (2) the acknowledgement of penalties clause must refer to imprisonment of not more than 5 years. Q.8.2: What forms has the Office made available related to the inventor s oath or declaration provision? The Office has added, among others, Form PTO/AIA/01: Declaration for Utility or Design Applications using an Application Data Sheet. This form is available from the USPTO Patent Forms website for applications filed on or after September 16, Q.8.3: Where can I obtain a combined inventor s oath or declaration and assignment? These forms are currently available on our website at Q.8.4: If an inventor cannot be found or refuses to sign the declaration, what form is required to submit a substitute statement?

17 The Office has added Form PTO/AIA/02 on the USPTO Patent Forms website for applications filed on or after September 16, 2012.