[author: Donald Zuhn]
On August 14, the U.S. Patent and Trademark Office published five notices in the Federal Register providing final rules packages for implementing various provisions of the Leahy-Smith America Invents Act. Among the final rules packages was one for implementing the inventor's oath or declaration provisions of the AIA ("Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act," 77 Fed. Reg. 48776). This notice finalized a number of proposed rules changes presented in the Office's notice of proposed rulemaking published in January ("Changes to Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act," 77 Fed. Reg. 982; see "USPTO Proposes Rules Changes for Implementing AIA Provisions -- Oath or Declaration Provisions").
The final rule on the oath or declaration provisions implements sections 4 and 20 of the AIA. Section 4 of the AIA amends 35 U.S.C. §§ 115 and 118 to change the practice regarding the inventor's oath or declaration and filing of an application by a person other than the inventor, and section 20 amends 35 U.S.C. §§ 116, 184, 251, and 256 (as well as other sections) to remove provisions that set forth a "without any deceptive intention" requirement. The final rule notice, however, indicates that the revisions brought about by section 20 of the AIA "should not be taken as an endorsement for applicants and inventors to act with 'deceptive intention' in proceedings before the Office." The final rule, which took effect on September 16, 2012, applies to patent applications filed, or proceedings commenced, on or after September 16, 2012.
The 51-page final rule notice provides a general discussion regarding implementation of section 4 of the AIA (pages 48778-81), a discussion of the specific amendments to the rules (pages 48781-98), comments received in response to the Office's notice of proposed rulemaking and the Office's responses to those comments (pages 48798-810), rulemaking considerations (pages 48810-11), and the text of the revised rules (pages 48811-26). A discussion of the first and third portions of the final rules notice is provided below.
The general discussion regarding the implementation of AIA section 4 is further subdivided with respect to the impact of the specific rules changes, corresponding to the headings listed below.
Changes Concerning Who May Apply for a Patent (the Applicant)
The final rule indicates that based on comments submitted in response to the notice of proposed rulemaking, the Office revised the position it took in the notice of proposed rulemaking and is now taking the position that the changes to 35 U.S.C. §§ 115 and 118 permit an assignee to file an application for patent as the applicant. Thus, a person to whom the inventor has assigned the invention (assignee), or is under an obligation to assign the invention (obligated assignee), or a person who otherwise shows sufficient proprietary interest in the matter, can file a patent application.
As the AIA distinguishes between the "applicant" and the person who must execute the oath or declaration under 35 U.S.C. § 115, the final rule notes that the Office has separated regulations pertaining to being the applicant from regulations pertaining to execution of the inventor's oath or declaration. As a result of the statutory change from an inventor-applicant system to an assignee-applicant system, the notice explains that:
• The term "applicant" means the inventor (all joint inventors collectively) if there is no assignee, or if the assignee has opted not to file the application and not to take over prosecution of the application to the exclusion of the inventor, or it means the assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest in the matter if such entity has filed the patent application or has taken over prosecution of the application to the exclusion of the inventor.
• The term "assignee" means the assignee of the entire right, title and interest in the application regardless of whether the assignee filed the application or has taken over prosecution of the application to the exclusion of the inventor.
In addition, because amended 35 U.S.C. § 118 specifies that the Office is to grant a patent to the real party in interest when the application was filed by a person other than the inventor, applicants other than the inventor must notify the Office of any change in the real party in interest in a reply to a notice of allowance. Absent such notification, the Office will presume that no change has occurred.
Changes to Oath or Declaration Practice
The final rule indicates that based on comments submitted in response to the notice of proposed rulemaking, the Office has streamlined a number of oath or declaration requirements. Among the changes provided by the final rule are the following:
• An inventor's oath or declaration need not indicate the name of each inventor, provided that the applicant provides an application data sheet indicating the legal name, residence, and mailing address of each inventor.
• The requirements that an inventor's oath or declaration state that the person executing the oath or declaration has reviewed and understands the contents of the application and acknowledges the duty to disclose to the Office all information known to the person to be material to patentability have been eliminated. However, 37 C.F.R. § 1.63 has been revised to state that a person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in 37 C.F.R. § 1.56.
• The requirements that any declaration under 35 U.S.C. § 115 contain an acknowledgement that willful false statements may jeopardize the validity of the application or any patent issuing thereon, and that all statements made of the declarant's own knowledge are true and that all statements made on information and belief are believed to be true have been eliminated.
• The requirement that the inventor identify his or her country of citizenship has been eliminated.
In addition, in response to comments submitted in response to the notice of proposed rulemaking, the final rule notes that the Office is allowing applicants to postpone filing of the inventor's oath or declaration until the application is otherwise in condition for allowance, provided that an application data sheet was provided before examination indicating the name, residence, and mailing address of each inventor. A surcharge for late filing of the oath or declaration will still be required. However, the final rule eliminates the Office's earlier proposal to charge a $3,000 fee to postpone submission of the inventor's oath or declaration until the application is in condition for allowance.
The final rule also notes that the Office, in a separate rulemaking, has proposed charging applicants a fee of $1,000 for filing a request to correct inventorship after the first Office action on the merits in order to encourage reasonable diligence and a bona fide effort in ascertaining the actual inventorship and providing that information to the Office prior to examination.
Moreover, for applications entering the national stage under 35 U.S.C. § 371 from an International application, the final rule states that "[t]he fourteen-month time frame in 35 U.S.C. 154(b)(1)(A)(i)(II) for issuing an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 is measured from 'the date on which an international application fulfilled the requirements of section 371,' which includes the filing of the inventor's oath or declaration." Thus, the notice points out that for national stage applications filed under § 371, a delay in filing the oath or declaration may have patent term adjustment (PTA) consequences.
Changes Pertaining to Substitute Statements
The final rule indicates that based on comments submitted in response to the notice of proposed rulemaking, the Office has streamlined a number of proposed requirements for filing a substitute statement in lieu of an oath or declaration. Thus, an assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest in the matter who is the applicant may execute a substitute statement in lieu of an oath or declaration if the applicant identifies:
(1) the circumstances permitting the person to execute the substitute statement in lieu of an oath or declaration (e.g., whether the non-signing inventor cannot be reached after a diligent effort was made, or has refused to execute the oath or declaration);
(2) the person executing the substitute statement with respect to the non-signing inventor and the relationship of such person to the non-signing inventor; and
(3) the last known address of the non-signing inventor.
The final rule also notes that:
• For an assignee or obligated assignee filing the application as the applicant, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) should be recorded no later than the date the issue fee is paid in the application.
• For a person who otherwise shows sufficient proprietary interest in the matter to file the application as the applicant, the showing of proprietary interest must be filed (and the fee set forth in 37 C.F.R. § 1.17(g) paid) and a petition granted before the person who has shown sufficient proprietary interest in the matter will be considered the applicant.
Changes Pertaining to Reissue Practice
The notice implementing the inventor's oath or declaration provisions of the AIA indicates that the rules regarding reissue practice have been revised to:
(1) delete the requirement for a reissue inventor's 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 inventor's oath or declaration;
(3) require the inventor's oath or declaration for a reissue application to identify a claim that the application seeks to broaden if the reissue application seeks to enlarge the scope of the claims of the patent; 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.
Among the other changes set forth in the final rule, juristic entities (organizations) that seek to prosecute an application, including taking over prosecution of an application, will need to do so via a registered practitioner. The notice also specifies a number of other miscellaneous changes, including:
(1) streamlining correction of inventorship, correction of an inventor's name, and changes in the order of the names of joint inventors;
(2) providing for the carryover of a power of attorney in continuing applications, where no inventors are being added in the continuing application;
(3) permitting practitioners who have acted only in a representative capacity in an application to change the correspondence address after a patent has issued;
(4) accepting the signature of a practitioner of record on a statement under 37 C.F.R. § 3.73(c) on behalf of an assignee without requiring further evidence of the practitioner's authority to act on behalf of the assignee;
(5) providing a procedure for handling conflicts between different purported assignees attempting to control prosecution; and
(6) 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.
In the portion of the final rule notice that sets forth the comments received in response to the Office's notice of proposed rulemaking and provides the Office's responses to those comments, the notice subdivides the comments into nine categories:
A. Assignee Filing
C. Substitute statements
D. Combined declaration and assignment
E. Power of attorney
G. Reissue applications
H. Application data sheet (§ 1.76)
I. Miscellaneous rules
In the comments section, the final rule notes that while 35 U.S.C. §§ 115 and 118, as amended by the AIA, provide for the filing of an application by a person other than the inventor as the applicant, 35 U.S.C. § 115 still requires an oath or declaration from the inventor (except in certain situations. i.e., where an inventor is deceased, under legal incapacity, or cannot be found or reached after diligent effort, or is under an obligation to assign the invention but has refused to make the oath or declaration).
The final rule also notes that in response to comments submitted in response to the notice of proposed rulemaking, the Office is requiring that an oath or declaration contain only the averments required by 35 U.S.C. § 115(b), if inventor information is provided in an application data sheet. Section 115(b) requires that the oath or declaration contain the following statements: (1) that the application was made or was authorized to be made by the affiant or declarant, and (2) that the individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.
The final rule indicates that a newly executed oath or declaration is not required for a continuing application where a copy of the oath or declaration from the earlier-filed application is provided. However, in an application claiming the benefit under 35 U.S.C. §§ 120, 121, or 365(c) of an earlier-filed application, a copy of the oath or declaration from the earlier-filed application may be provided only if:
(1) an oath or declaration meeting the requirements of 35 U.S.C. § 115(a) (i.e., naming the inventor(s)) 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) (i.e., including the required statements of § 115(b) and (c)) was executed with respect to the earlier-filed application by the individual and was recorded in connection with the earlier-filed application.
Notwithstanding the first option listed above, the notice also states that:
With respect to continuing applications, 35 U.S.C. 115(g)(1)(A) provides an exception to a newly executed oath or declaration only 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 required statements in 35 U.S.C. 115(b). Accordingly, a copy of an oath or declaration from a prior application filed before September 16, 2012, must meet the requirements of 35 U.S.C. 115 as amended by the AIA.
(emphasis added). The final rule further indicates that where the oath or declaration is set forth in an assignment document that was recorded against the parent application, there is no requirement that the copy be again recorded against the continuing application.
With respect to the applicability of the rules changes set forth in the final rule, the notice indicates that:
• 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; and
• For applications filed on or after September 16, 2012, any oath or declaration submitted must meet the requirements of 35 U.S.C. § 115 as amended by the AIA.
The final rule also indicates that for applications filed on or after September 16, 2012, a foreign priority claim under § 1.55 or domestic benefit claim under § 1.78 made in the first paragraph of a specification would not be an effective priority or benefit claim and the Office would process the priority claim based on the information in the application data sheet.
The final rule further indicates that the rules governing applicants for international applications (§§ 1.421, 1.422, and 1.424) have been amended consistent with the AIA to no longer require that an inventor be an applicant in the United States.
Under amended 37 C.F.R. § 1.76(c), the final rule notes that information in a previously submitted application data sheet or the inventor's oath or declaration under §§ 1.63, 1.64, or 1.67 may be corrected or updated until payment of the issue fee by a new application data sheet providing corrected or updated information, except that inventorship changes must comply with the requirements of § 1.48, foreign priority and domestic benefit information changes must comply with §§ 1.55 and 1.78, and correspondence address changes are governed by § 1.33(a).