By Donald Zuhn —

On Monday, the U.S. Patent and Trademark Office issued a notice in the Federal Register (77 Fed. Reg. 4509) announcing that the Patent Public Advisory Committee (PPAC) will be holding two public hearings in February regarding proposed patent fees.  The public hearings are being held pursuant to § 10 of the Leahy-Smith America Invents Act, which concerns the Office's fee setting authority.  Under that section, the Director is permitted to set or adjust any fee established, authorized, or charged under Title 35 (but "only to recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents").

AIA § 10 also outlines the process whereby the Director is allowed to set or adjust such fees.  In particular, the Director must submit a proposed fee change to the PPAC not less than 45 days before publishing the proposed fee in the Federal Register, after which the PPAC shall have 30 days to deliberate, consider, and comment on the proposal as well as hold a public hearing on the proposal.  The Director shall then consider and analyze the PPAC's comments, advice, or recommendations before setting or adjusting the fee.  AIA § 10 also requires that the Director provide the public with a 45-day period in which to comment on any fee change, and specifies that fee changes shall not become effective until 45 days after the final rule regarding such change is published in the Federal Register (in order to give Congress an opportunity to enact a law disapproving of the fee change).

In Monday's notice, the Office indicated that it is planning to set or adjust fees pursuant to its § 10 fee setting authority.  In order to comply with the requirements of § 10, the Office will be holding two public hearings on proposed patent fees.  The hearings will take place on from 8:00 am to 3:00 pm (EST) on February 15 in the Madison Auditorium, 600 Dulany Street, Alexandria, Virginia 22314; and from 8:00 am to 3:00 pm (PST) on February 23, 2012 at the Sunnyvale Public Library, 665 W. Olive Avenue, Sunnyvale, California 94086.  Both public hearings will be made available via webcast (details forthcoming).

The notice indicates that the Office will publish a proposed patent fee schedule and related supplementary information for public viewing on the USPTO's AIA webpage no later than February 7, 2012.  Following the public hearings, the Office intends to publish a notice of proposed rulemaking in the Federal Register setting forth the proposed patent fees, after which the public will be afforded an opportunity to comment on the fees again.

Individuals wishing to present oral testimony at either hearing must request an opportunity to do so in writing no later than February 8, 2012.  Requests to testify must be submitted by e-mail to Jennifer Lo at Jennifer.Lo@uspto.gov, and should include:  (1) the name of the person wishing to testify; (2) the person's contact information (telephone number and e-mail address); (3) the organizations the person represents, if any; and (4) an indication of the amount of time needed for the testimony.

Those wishing to submit written comments must do so on or before February 29, 2012.  Written comments can be sent by e-mail to fee.setting@uspto.gov or by regular mail addressed to:  United States Patent and Trademark Office, Mail Stop CFO, P.O. Box 1450, Alexandria, VA 22313–1450, ATTN: Michelle Picard.

By Donald Zuhn —

Last November, officials from the U.S. Patent and Trademark Office indicated that ten notices of proposed rulemaking to implement various provisions of the Leahy-Smith America Invents Act were being drafted and vetted by the Office, and that the notices would be published in January 2012.  With January drawing to a close, the Office has thus far published five of these notices.  In previous posts, we have discussed three of the notices (concerning implementation of the AIA's miscellaneous post patent provisions, preissuance submissions provision, and provisions on disciplinary proceedings — see links below).  A subsequent post will address a recently published notice concerning the implementation of the AIA's supplemental examination provisions (77 Fed. Reg. 3666).  Today, we address the Office's notice on "Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act " (77 Fed. Reg. 982).

The 22-page notice proposes changes that are intended to revise and clarify the rules of practice relating to the inventor's oath or declaration, assignments containing oath or declaration statements from inventors, and oaths or declarations signed by parties other than the inventors, as well as revise and clarify the rules of practice for powers of attorney and prosecution of an application by an assignee.  In particular, the notice proposes changes to the rules to implement AIA § 4, which amends 35 U.S.C. §§ 115 and 118 to change the practice regarding an inventor's oath or declaration, and AIA § 20, which amends, inter alia, 35 U.S.C. §§ 116, 184, 251, and 256 to remove the "without any deceptive intention" language.  A list of the specific changes to each of these sections can be found on pages 982-84 of the notice.

Following the list of specific changes to Title 35, the notice provides a general discussion regarding the implementation of AIA §§ 4 and 20.  With regard to these changes, the notice indicates that amended § 115 permits the required inventor statements (i.e., that the application was made or was authorized to be made by the affiant or declarant, and that the individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application) 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).  Because amended § 115 no longer requires an inventor to identify his or her country of citizenship, the Office will no longer require this information to be included in the oath or declaration.

The Office also proposes changes to the rules that will allow an assignee, a party to whom the inventor is legally obligated to assign the invention, or 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.  The Office further proposes changes to the rules to allow inventors to make the required statements in an assignment executed by the inventor and recorded in the Office (including a proposal to require that the assignment cover sheet identify the assignment as also being an oath or declaration).

While the AIA permits the Office to delay requiring an oath or declaration until allowance, the Office determined that it would be "better for the examination process and patent pendency to continue to require the oath or declaration during preexamination."  For example, the Office noted that it "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 notice indicates that the Office considered discontinuing the practice of charging a surcharge for late filing of an oath or declaration, but states 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."

With regard to powers of attorney, the Office proposes changes to the rules that will:

• Provide for the carryover of a power of attorney in continuation and divisional applications, and in continuation-in-part applications where inventorship is the same as in the immediate prior application;
• Permit practitioners who have acted only in a representative capacity in an application to change the correspondence address after a patent has issued;
• Accept the signature of a practitioner of record on a statement under 37 C.F.R. § 3.73(b) on behalf of an assignee without requiring further evidence of the practitioner's authority to act on behalf of the assignee;
• Provide a procedure for handling conflicts between different purported assignees attempting to control prosecution; and
• Harmonize the practice regarding foreign and domestic priority claims by requiring both types of claims to be set forth in an application data sheet.

A lengthy discussion of the specific changes to the rules to implement the above changes can be found on pages 985-96 of the notice.  Additional discussion of the rules changes, as well as revised versions of the affected rules (see pages 998-1003) can be found in the Office's Federal Register notice (77 Fed. Reg. 982).

Comments regarding this notice can be submitted by e-mail to oath_declaration@uspto.gov; by regular 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; or via the Federal eRulemaking Portal.  The deadline for submitting comments is March 6, 2012.  Additional information regarding the submission of comments can be found in the Office's Federal Register notice (77 Fed. Reg. 982).

For information regarding the Office's implementation of other AIA provisions, please see:

• "USPTO Proposes Rules Changes for Implementing AIA Provisions — Statute of Limitations Provisions for Office Disciplinary Proceedings," January 16, 2012
• "USPTO Proposes Rules Changes for Implementing AIA Provisions — Preissuance Submissions Provision," January 12, 2012
• "USPTO Proposes Rules Changes for Implementing AIA Provisions — Miscellaneous Post Patent Provisions," January 11, 2012