By Kevin E. Noonan —

Another significant change effected by the Leahy-Smith America Invents Act relates to the power of an assignee, or someone who has obligated an inventor to assign, to file an application without obtaining an oath or declaration (or even permission or knowledge) of the inventor, raising an interesting Constitutional question as discussed below.

This change is effected by Section 4 of the Act, which amends 35 U.S.C. § 115.  As in the current version of § 115, new § 115(a) provides that an application requires the name of the inventor or inventors and an oath or declaration stating that the application was made (or was authorized to be made) by the affiant/declarant, and that the individual believes himself/herself to be the original sole or joint inventor of the claimed invention (§ 115(b)).  In the first of several delegations of authority from the statute to the Director, § 115(c) gives the Director the right to "specify additional information relating to the inventor and the invention that is required to be included in an oath or declaration."

It is in new § 115(d) that the effects of the changes begin to become evident.  Section 115(d)(1) provides that an assignee ("the applicant") can file an application in the name of an inventor who is deceased, "under legal incapacity" or "cannot be found after diligent effort" (Section 115(d)(2)(A)), or who is "under an obligation to assign" but has refused to do so (Section 115(d)(2)(B)).  The substitute statement under these circumstances must contain the identification of the individual, "set forth the circumstances representing the permitted basis for the filing of the substitute statement in lieu of the oath or declaration" and (again) "any additional information, including any showing, required by the Director (Section 115(d)(3)).

New § 115(e) permits the "required statements" of §§ 115(b) and (c) to be included in the assignment document, and new § 115(f) prohibits the Director from issuing a Notice of Allowance unless there has been submitted "each required oath or declaration under subsection (a) or has filed a substitute statement under subsection (d) or recorded an assignment meeting the requirements of subsection (e)."  This language suggests that the assignment document might be substituted for the oath/declaration to satisfy the requirements under circumstances other than those where the inventor is unable, unavailable, or unwilling to sign (provided the assignment document is signed).  Since assignment documents are traditionally not constrained by the limitations of oaths or declarations (i.e., that neither the application nor the oath/declaration can be altered after the oath/declaration is signed), there is at least the possibility (particularly in view of the latitude given the Director) for assignments to be accepted under circumstances where an inventor (or, more likely, a co-inventor) is unaware that an application has been filed.  Similar possibilities exist for later-filed applications (continuations, divisionals, or continuations-in-part), since new § 115(g) provides that a new oath/declaration need not be filed if in the earlier application an oath/declaration pursuant to new § 115(a) (according to § 115(g)(1)(A)), a substitute statement under new § 115(d) (according to § 115(g)(1)(B)),  or an assignment under new § 115(e) (according to § 115(g)(1)(C)) has been filed, although the Director is empowered to require that the "applicant" file a copy of such documents (§ 115(g)(2)).

New § 115(h)(1) further provides that "[a]ny person making a statement required under this section may withdraw, replace or otherwise correct the statement at any time" pursuant to regulations established by the Director "under which any such additional statements shall be filed."  In addition, "the Director may not  . . . require that any individual [] make any additional oath, declaration or other statement" once that individual has fulfilled the requirements of §§ 115(a) or (e) (i.e., the assignment shall be sufficient under this section) (§ 115(h)(2)).  This part of the statute also has an express "savings clause" (§ 115(h)(3) permitting any irregularities in the oath or declaration to be cured by such "corrective statements."  New § 115(i) contains the provision that "any willful false statement made in such declaration or statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both."

In addition to certain conforming amendments under Section 4(b)(1), the Act amends current 35 U.S.C. § 118 (filing by other than inventor) as follows:

A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.  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.  If the Director grants a patent on an application filed under this section 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.

Section 4(b)(2) amends 35 U.S.C. § 251 to permit the applicant (assignee) to file a reissue application (and presumably sign the oath/declaration attesting that the patent for reissue is defective).

In keeping with the reflection of the statute-writing process, Section 4(c) revises 35 U.S.C. § 112 to replace paragraph designations with subsections; thus, § 112, 1st paragraph, is changed to § 112(a), § 112, 2nd paragraph, is changed to § 112(b), etc.  There is no indication why this change has been included in the bill.  Section 4(d) contains conforming amendments to §§ 111(b)(1)(A) and (b)(2) to reflect these amendments to § 112.

The effective date of these provisions is "1 year after the date of the enactment of this Act [i.e., September 16, 2012] and shall apply to patent applications that are filed on or after that effective date" under Section 4(e).

For additional information regarding this topic, please see:

• "AIA Overview: Supplemental Examination," October 26, 2011
• "AIA Overview: Changes to Provisions Relating to Third Party Submissions of Prior Art," October 24, 2011
• "AIA Overview: Changes to Inter Partes Re-examination," October 23, 2011
• "AIA Overview: Post-grant Review Provisions," October 20, 2011
• "AIA Overview: Prior User Rights Defense," October 19, 2011
• "AIA Overview: First-Inventor-to-File Provisions," October 11, 2011
• "USPTO Seeking Comment on AIA Mandated Studies," October 10, 2011
• "USPTO Implements AIA Changes to Inter Partes Reexamination," September 28, 2011
• "USPTO Implements Prioritized Examination Track under AIA," September 26, 2011
• "President Signs AIA into Law; USPTO Begins Implementation of Act," September 20, 2011

By Kevin E. Noonan —

One provision in the Leahy-Smith America Invents Act (AIA) that appears to benefit (or at least be intended to benefit) patentees is the Supplemental Examination revision set forth in Section 12.

This section revises 35 U.S.C. § 257 to include a new "Request for Supplemental Examination" that is limited to filings by the patent owner (§ 257(a)).  The Request permits the patentee to "consider, reconsider, or correct information believed [by the patent owner] to be relevant to the patent," by far the most extensive grounds for Patent Office reconsideration of all the avenues of reconsideration in the statute (ex parte reexamination, inter partes review, or post-grant review).  The statute provides that the supplemental examination must be considered by the Office within three months of filing the request, and be concluded by issuance of a certificate indicating "whether the information presented in the request raises a substantial new question of patentability" (SQP).  If the Director's determines that a SQP exists, then the Director will order reexamination (§ 257(b)).

Re-examination is conducted pursuant to current ex parte re-examination practice (save the provisions of 35 U.S.C. § 304), i.e., by the examining corps and the Director "shall consider" each SQP raised in the request, "notwithstanding the limitations in chapter 30 relating to patents and printed publication or any other provision of such chapter [30]" (§ 257(b)).  The benefits of this supplemental examination are set forth in § 257(c), wherein a patent "shall not be held to be unenforceable" bsed on any information "that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent" that was considered by the Office during supplemental examination.  Moreover, the statute provides that either making or failing to make a request "shall not be relevant to enforceability of the patent under section 282" (§ 257(c)(1)).

The statute provides several exceptions to this particular form of absolution, including that the benefits of filing a supplemental examination request "shall not apply to an allegation pled with particularity in a civil action" or to an allegation contained in a Paragraph 4 notice received by the patentee under the provisions of the Hatch-Waxman Act (§ 505(j)(2)(B)(iv)(II) of the Federal Food, Drug, and Cosmetic Act, codified at 21 U.S.C. § 355(j)(2)(B)(iv)(II)) before the filing of the supplemental examination request (§ 257(c)(2)(A)).  In addition, the protections afforded by § 257(c)(1) "shall not apply" to any section 337(a) action under the Tariff Act of 1930 or a civil action for patent infringement under 35 U.S.C. § 281 "unless the supplemental examination, and any reexamination ordered pursuant to the request, are concluded before the date on which the action is brought," thus preventing a patentee to attempt to inoculate itself from an inequitable conduct allegation after litigation has ensued (§ 257(c)(2)(B)).

A significant limitation to the protections afforded by § 257(c)(1) is set forth in § 257(e), which excludes instances of "material fraud" from the provisions of § 257(c)(1).  If "material fraud" is found, the Director is empowered to take any action otherwise authorized (including cancelling a claim or claims under 35 U.S.C. § 307) and in addition is directed ("shall") to "refer the matter to the Attorney General for such further action as the Attorney General may deem appropriate" (although such referral "shall be treated as confidential, shall not be included in the file of the patent, and shall not be disclosed to the public unless the United States charges a person with a criminal offense in connection with such referral").  In this regard the statute "preclude[s] the imposition of sanctions based upon criminal or antitrust laws" (§ 257(f)(1)) or "to limit the authority of the Director to investigate issues of possible misconduct and impose sanctions for misconduct in connection with matters or proceedings before the Office" (§ 257(f)(2)).

Fees and regulations are to be set by the Director ((§ 257(d)), with the express provision that the Office is entitled to collect fees associated with ex parte reexamination in addition to supplemental examination fees if reexamination is ordered pursuant to § 257(b).

Section 12(c) of the AIA provides that the effective date of these provisions is "upon the expiration of the 1-year period beginning on the date of the enactment of this Act" (September 16, 2012) "and shall apply to any patent issued before, on, or after that effective date."