By 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.

Miscellaneous Changes

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
B. Oath/Declaration
C. Substitute statements
D. Combined declaration and
assignment
E. Power of attorney
F. PCT
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).