On September 16, 2012, a series of new USPTO rules went into effect. This is the second wave of implementation of the America Invents Act (AIA). Believe it or not, the Patent Bar Exam will start to test these new rules and procedures starting October 2, 2012. That means that I have been feverishly working with others at PLI to prepare fresh, new materials for the PLI Patent Bar Review Course.
Thus, having the new rules and nuances on my mind, I thought I would write about a few things you probably should know about the new rules pertaining to Oaths and Declarations.
1. Naming the Inventor
By now you probably are aware that we have new rules relating to the oath or declaration. Thanks to the AIA, it is not necessary to file an application in the name of the inventor, but the inventor still must be identified. 35 U.S.C. 115(a) provides that an application filed under 35 U.S.C. 111(a) or that commences the national stage under 35 U.S.C. 371 must include, or be amended to include, the name of the inventor for any invention claimed in the application.
2. Old Oath/Declaration Rule
Although an application for a patent may be filed in the name of the “applicant” on or after September 16, 2012, for applications filed on or before September 15, 2012, the old oath and declaration rules still apply. In response to a question put to the USPTO during the public comment period, the Final Rules explain that the date of execution of the oath or declaration is not relevant. Any oath or declaration submitted in an application filed on or after September 16, 2012 (regardless of the date of execution of the oath or declaration) must meet the requirements of 35 U.S.C. 115 as amended by the AIA.
3. Notice of Allowability
The oath or declaration of the inventors does not need to be present until near the end of the prosecution. When the Oath or declaration is not present, and after the application has only allowable matter, a “Notice of Allowability” will be sent by the Patent Office. Failure to file the oath or declaration within the time period set in the Notice of Allowability will result in abandonment of the application. See 37 CFR 1.53(f)(3)(ii) and See 37 CFR 1.495(c)(3)(ii). The time period set in the Notice of Allowability is not extendable. See § 1.136(c). Assuming the oath or declarations are filed timely in response to a Notice of Allowability the Office will then issue a Notice of Allowance. The Office will dispense with the Notice of Allowability if an oath or declaration under § 1.63, or substitute statement under § 1.64, executed by or with respect to each actual inventor, has been filed before the application is in condition for allowance.
4. Application Data Sheet
While an application may be filed without an oath or declaration arriving until late in the prosecution in response to a Notice of Allowability, the inventor must still be identified. For example, 37 CFR 1.41(b) provides that the applicant may name the inventorship of a nonprovisional application under 35 U.S.C. 111(a) in the application data sheet in accordance with § 1.76. Further, 37 CFR 1.46(b) provides that if an application under 35 U.S.C. 111 is made by a person other than the inventor under § 1.46(a), the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter.
5. Substitute Statement
35 U.S.C. 115(a) requires that each inventor be named and each inventor or joint inventor must execute an oath or declaration unless “otherwise provided.” 35 U.S.C. 115(b) relates to the exception that will allow for the application to be made without the cooperation of the inventor. In lieu of executing an oath or declaration under subsection 115(a), the applicant for patent may provide a “substitute statement.” The substitute statement must identify the individual to whom the statement pertains. Furthermore, the substitute statement must either state that the inventor identified is under an obligation to assign and refused to execute the oath or declaration (see 115(d)(2)(B)) or that the inventor is deceased, legally incapacitated or cannot be found after reasonable effort (see 115(d)(2)(A)).