Fitch, Even, Tabin & Flannery LLP: USPTO Issues Final Rules for Inventor’s Oath or Declaration

Fitch, Even, Tabin & Flannery LLP: USPTO Issues Final Rules for Inventor’s Oath or Declaration

As previously reported, on August 14, 2012, the USPTO published final rules in the Federal Register implementing revised rules of practice relating to the inventor's oath or declaration. These new rules will be effective September 16, 2012, and apply to applications filed on or after September 16, 2012. The new rules change the requirements for the oath or declaration. The inventor's oath or declaration must include the name of the inventor or joint inventor of a claimed invention with a statement that the application was made or was authorized to be made by the affiant or declarant. The oath or declaration must include a statement that the individual believes himself or herself to be the original inventor or an original joint inventor of the claimed invention. If there is more than one inventor, then each inventor must execute an oath or declaration.

There is no longer a requirement in the oath or declaration that the inventor must state his or her country of citizenship or that the inventor believes himself or herself to be the "first" inventor of the subject matter sought to be patented. The latter change is made in anticipation of the first-inventor-to-file rules that will become effective March 16, 2013. However, the declaration must contain an acknowledgment that any willful false statements made are punishable under 18 U.S.C. § 1001 by fine or imprisonment of not more than five years.

The inventors do not have to see each other's signatures if an Application Data Sheet (ADS) is filed that contains a list of all inventors, their legal names, mailing address, and residence (if different from mailing address). Therefore, the oath or declaration does not have to list all of the inventors and, moreover, the filing of the oath and declaration can be delayed until the application is otherwise in a condition for allowance. However, in order to avoid receiving a Notice to File Missing Parts because of a missing oath or declaration, the ADS listing all inventors must be filed and the surcharge fee for late filing of an oath or declaration paid.

An oath/declaration and an assignment can be combined and used as the oath or declaration. This is called the assignment-statement. To serve as the oath or declaration, the assignment-statement should include all the same information and statements required in the oath or declaration, and a copy of the assignment needs to be recorded in the assignment database and identified as serving a dual purpose so the USPTO knows to scan a copy of the assignment-statement into the Image File Wrapper (IFW) as an oath or declaration.

Additionally, the definition of an applicant who can file an application has been changed. An applicant does not have to be an inventor. An applicant can include an inventor or a joint inventor, but also an assignee, obligated assignee (i.e., person/entity to whom the inventor is obligated to assign), or a person who otherwise shows sufficient proprietary interest in the matter. Regardless of who is the applicant, each inventor is still required to execute an oath or declaration, unless one of the exceptions applies as discussed below.

The rules also allow for someone other than the inventor to execute an oath or declaration in certain circumstances (i.e., the exceptions to an inventor signature). A substitute statement may be executed by an applicant for patent where the inventor is unable to file the oath or declaration because the individual is deceased, under legal incapacity, 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 required. The substitute statement must identify the individual with respect to whom the statement applies and set forth one of the above circumstances that provides the basis for filing the substitute statement.

Finally, the requirements for a reissue oath under 35 U.S.C. § 251 have been modified so that the requirement of an error "without deceptive intent" has been removed from the reissue oath. The USPTO also revised the rules to eliminate the requirement for a supplemental reissue oath or declaration. However, an error being relied upon as the basis for the reissue must still be identified by a practitioner statement, such as in remarks of an amendment.

If you have questions regarding the new rules relating to the inventor's oath or declaration, please contact Fitch Even partner Timothy E. Levstik.

--Written by Fitch Even attorney Nada J. Ardeleanu

© Copyright 2006-2012 Fitch, Even, Tabin & Flannery LLP - All Rights Reserved

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