USPTO Proposes New Rules to Implement the Inventor's Oath or Declaration Provisions of the AIA | Practical Law

USPTO Proposes New Rules to Implement the Inventor's Oath or Declaration Provisions of the AIA | Practical Law

On January 6, 2012, the USPTO published proposed rules to implement the inventor's oath or declaration provisions of the Leahy-Smith America Invents Act (AIA). The proposed rules revise and clarify the rules concerning inventor's oaths or declarations, including reissue oaths or declarations, assignments containing oath or declaration statements from inventors and oaths or declarations signed by parties other than the inventors. The proposed rules also revise and clarify other USPTO patent rules of practice.

USPTO Proposes New Rules to Implement the Inventor's Oath or Declaration Provisions of the AIA

by PLC Intellectual Property & Technology
Published on 10 Jan 2012 • USA (National/Federal)
On January 6, 2012, the USPTO published proposed rules to implement the inventor's oath or declaration provisions of the Leahy-Smith America Invents Act (AIA). The proposed rules revise and clarify the rules concerning inventor's oaths or declarations, including reissue oaths or declarations, assignments containing oath or declaration statements from inventors and oaths or declarations signed by parties other than the inventors. The proposed rules also revise and clarify other USPTO patent rules of practice.
On January 6, 2012, the USPTO published a notice of proposed rulemaking in the Federal Register to implement the inventor's oath or declaration provisions of the Leahy-Smith America Invents Act (AIA). The proposed rules would amend various sections of Title 37 of the Code of Federal Regulations (CFR) to:
  • Address the changed requirements for an inventor's oath or declaration.
  • Change the patent rules of practice concerning a patent application filed by a person other than the inventor.
  • Amend other USPTO patent rules of practice to:
    • improve the efficiency of the patent application process;
    • provide clarification to certain USPTO rules of practice; and
    • conform certain USPTO rules of practice with the changes made by the AIA.
For example, the USPTO proposes revising:
  • Section 1.41(a)(3) to eliminate the requirement of identifying an inventor's citizenship in certain patent application filing situations.
  • Sections 1.41(a)(4) and 1.48(k) to simplify correcting inventorship in a national stage patent application filing.
  • Section 1.48 to eliminate the "without deceptive intention" requirement for certain inventor oaths or declarations.
In addition, the proposed rules would amend the following sections of the CFR addressing the oath or declaration requirements for nonsigning inventors:
  • Section 1.42.
  • Section 1.47.
  • Section 1.64(b).
  • Section 1.311.
  • Section 1.497.
  • Section 3.73.
Other proposed rule changes include revising:
  • Sections 1.1(e), 1.33(a), 1.33(g), 1.33(h), 1.41(c) and 1.63(b) to address certain mailing and correspondence address rules.
  • Section 1.4(e) to require that a payment by credit card in patent cases may only be submitted with a signature that is original, handwritten and personally signed.
  • Sections 1.31(a), 1.33(f) and 3.71 to require that a juristic entity must be represented by a patent practitioner.
  • Section 1.32 to address certain power-of-attorney requirements, including the carryover of a power of attorney in continuing applications.
  • Sections 1.55(a)(1)(i), (c) and (d)(1)(ii) to require a foreign priority claim to be identified in an application data sheet or supplemental application data sheet.
  • Sections 1.63(c)(1)(i) and (ii) and 3.31 to permit the use of assignments that also include the oath or declaration.
  • Section 1.63(c)(2) to eliminate the requirement for identifying the claim for foreign priority in the oath or declaration.
  • Section 1.63(d)(1) to provide that a newly executed oath or declaration in an application claiming foreign priority or the benefit of an earlier filed US patent application is not required if a compliant oath or declaration was filed in the earlier application.
  • Section 1.78(a) to require that a benefit claim to a prior-filed provisional or nonprovisional application or international application designating the US by a later-filed nonprovisional application must be in the application data sheet or a supplemental application data sheet.
  • Sections 1.172 and 1.175 to clarify the requirements for reissue oaths or declarations.
The USPTO is accepting comments on the proposed rules through March 6, 2012.
For more information on the Leahy-Smith America Invents Act, see Practice Note, Leahy-Smith America Invents Act: Overview.