The USPTO has published proposed rules to implement changes to the inventor oath/declaration requirements contained in the America Invents Act. The proposed rules recognize the changes to 35 USC §§ 115 and 118, but also reflect 35 §§ 111(a) and 371, which were not amended. Companies who were hoping for significant changes to the inventor oath/declaration requirements or looking for the ability to file applications without the need to obtain inventor declarations may be disappointed by the proposed rules. They and others can submit written comments to the USPTO by March 6, 2012.
The AIA Provisions
The AIA provisions at issue take effect September 16, 2012, and apply to patent applications filed on or after that date.
The AIA amends 35 USC § 115 to read as follows.
(a) NAMING THE INVENTOR; INVENTOR’S OATH OR DECLARATION.—An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.
(b) REQUIRED STATEMENTS.—An oath or declaration under subsection (a) shall contain statements that—
(1) the application was made or was authorized to be made by the affiant or declarant; and
(2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.
(c) ADDITIONAL REQUIREMENTS.—The Director may specify additional information relating to the inventor and the invention that is required to be included in an oath or declaration under subsection (a).
(d) SUBSTITUTE STATEMENT.—
(1) IN GENERAL.—In lieu of executing an oath or declaration under subsection (a), the applicant for patent may provide a substitute statement under the circumstances described in paragraph (2) and such additional circumstances that the Director may specify by regulation.
(2) PERMITTED CIRCUMSTANCES.—A substitute statement under paragraph (1) is permitted with respect to any individual who—(A) is unable to file the oath or declaration under subsection (a) because the individual—
(i) is deceased;
(ii) is under legal incapacity; or
(iii) cannot be found or reached after diligent effort; or
(B) is under an obligation to assign the invention but has refused to make the oath or declaration required under subsection (a).
(3) CONTENTS.—A substitute statement under this subsection shall—
(A) identify the individual with respect to whom the statement applies;
(B) set forth the circumstances representing the permitted basis for the filing of the substitute statement in lieu of the oath or declaration under subsection (a); and
(C) contain any additional information, including any showing, required by the Director.
(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT OF RECORD.—An individual who is under an obligation of assignment of an application for patent may include the required statements under subsections (b) and (c) in the assignment executed by the individual, in lieu of filing such statements separately.
(f) TIME FOR FILING.—A notice of allowance under section 151 may be provided to an applicant for patent only if the applicant for patent has filed 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).
(g) EARLIER-FILED APPLICATION CONTAINING REQUIRED STATEMENTS OR SUBSTITUTE STATEMENT.—
(1) EXCEPTION.—The requirements under this section shall not apply to an individual with respect to an application for patent in which the individual is named as the inventor or a joint inventor and who claims the benefit under section 120, 121, or 365(c) of the filing of an earlier-filed application, if—
(A) an oath or declaration meeting the requirements of subsection (a) was executed by the individual and was filed in connection with the earlier-filed application;
(B) a substitute statement meeting the requirements of subsection (d) was filed in connection with the earlier filed application with respect to the individual; or
(C) an assignment meeting the requirements of subsection (e) was executed with respect to the earlier-filed application by the individual and was recorded in connection with the earlier-filed application.
(2) COPIES OF OATHS, DECLARATIONS, STATEMENTS, OR ASSIGNMENTS.—Notwithstanding paragraph (1), the Director may require that a copy of the executed oath or declaration, the substitute statement, or the assignment filed in connection with the earlier-filed application be included in the later-filed application.
(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; FILING ADDITIONAL STATEMENTS.—
(1) IN GENERAL.—Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement at any time. If a change is made in the naming of the inventor requiring the filing of 1 or more additional statements under this section, the Director shall establish regulations under which such additional statements may be filed.
(2) SUPPLEMENTAL STATEMENTS NOT REQUIRED.—If an individual has executed an oath or declaration meeting the requirements of subsection (a) or an assignment meeting the requirements of subsection (e) with respect to an application for patent, the Director may not thereafter require that individual to make any additional oath, declaration, or other statement equivalent to those required by this section in connection with the application for patent or any patent issuing thereon.
(3) SAVINGS CLAUSE.—A patent shall not be invalid or unenforceable based upon the failure to comply with a requirement under this section if the failure is remedied as provided under paragraph (1).
(i) ACKNOWLEDGMENT OF PENALTIES.—Any declaration or statement filed pursuant to this section shall contain an acknowledgment 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.
The AIA amends 35 USC § 118 to read 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.
Other Provisions of the Patent Act
The AIA did not amend 35 USC § 111(a), which reads as follows:
(a) IN GENERAL.-
(1) WRITTEN APPLICATION.-An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.-Such application shall include-
(A) a specification as prescribed by section 112 of this title;
(B) a drawing as prescribed by section 113 of this title; and
(C) an oath by the applicant as prescribed by section 115 of this title.
(3) FEE AND OATH.-The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(4) FAILURE TO SUBMIT.-Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
35 USC 371 includes a similar oath/declaration requirement for U.S. national stage applications.
The Proposed Rules
The Federal Register Notice sets forth proposed changes to a number of different rules, some directly affected by the AIA amendments and some only tangentially related to the AIA. For this article, I highlight some of the “big picture” issues raised in the commentary.
- An oath/declaration executed by the inventors will be required in most instances, with exceptions similar to those available now.
The comments in the Federal Register Notice recognize that the AIA amendments to 35 USC § 118 provide that “an assignee, an obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter may make an application for patent,” but state that “an oath or declaration (or an assignment containing the required statements) by each of the inventors is still required, except in the [limited] circumstances set forth in 35 USC § 115(d)(2) and in any additional circumstances specified by the Director in the regulations.”
Thus, according to the USPTO, “[t]he changes to 35 USC §§115 and 118 do not mean that a person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent in all circumstances,” but only “[i]n those circumstances set forth in 35 USC § 115(d)(2).”
- An executed oath/declaration still will be required before substantive examination.
The comments in the Federal Register Notice recognize that the AIA amendments to 35 USC § 115 provide that “a notice of allowance under 35 USC § 151 may be provided to an applicant only if the applicant has [satisfied the oath/declaration requirements," but cites 35 USC § 111(a) and 35 USC § 371 as including an oath/declaration as part of the application requirements and as permitting the Director to set a time limit for submitting an executed oath/declaration.
The USPTO offers several good reasons for requiring an executed oath/declaration before substantive examination. Because inventorship is not set until an executed oath/declaration is filed, delaying the filing of the oath/declaration in effect delays the inventorship determination. Because inventorship may be relevant to prior art and double patenting determinations, substantive examination requires knowledge of inventorship. Additionally, permitting an executed oath/declaration to be delayed until the application otherwise is allowable could delay prosecution and extend pendency if the examiner has completed substantive examination but still has to wait for executed oath/declaration to be filed before issuing a notice of allowance.
As an aside, the comments state that "for those few applicants who actually need more time than is permitted for completing applications during pre-examination, the Office has practices that would permit an extended period for completing an application," citing the Pilot Program for Extended Time Period To Reply to a Notice To File Missing Parts of Nonprovisional Application, 75 FR 76401 (Dec. 8, 2010). However, while this program provides an extend time period for paying certain fees, it still requires an executed oath/declaration to be filed within the usual time period!
- An oath/declaration need not identify the citizenship of the inventor(s).
The amended version of 35 USC § 115 does not require an identification of the inventor's country of citizenship. The USPTO therefore is eliminating this requirement from 37 CFR § 1.63.
- An oath/declaration will have to include a new statement.
Consistent with the amended version of 35 USC § 115, an oath/declaration need not assert that the person believes the named inventor or joint inventors to be the original and first inventor(s), although it still must state that the person believes the named inventor or joint inventors to be the original inventors. An oath/declaration also must include a new statement that "the application was made or was authorized to be made by the inventor."
- In order to rely on an assignment instead of a separate oath/declaration, the assignment will have to be recorded and filed in the application.
The comments explain that the USPTO "will permit inventors to make the required [oath/declaration] statements in an assignment executed by the inventor and recorded in the Office.” Additionally, the proposed rules would “require that a copy of any recorded assignment . . . be filed in the application, rather than merely making reference to its recording in regard to the application.” Further, the assignment recordation cover sheet will have to note that the document is being relied upon to satisfy the oath/declaration requirement.
- Other miscellaneous proposed rule changes
The Federal Register Notice includes other miscellaneous proposed rule changes promulgated pursuant to the USPTO’s authority under 35 USC §2(b)(2), relating “to the rules of practice for power of attorney, prosecution of an application by an assignee, and foreign priority claims,” that are designed “to facilitate prosecution of applications and improve the quality of patents.” For example:
- a power of attorney will carry over to continuation and divisional applications, and to continuation-in-part applications with the same inventorship
- the signature of a practitioner of record will be accepted on a statement under 37 CFR 3.73(b) on behalf of an assignee without further evidence of the practitioner’s authority to act on behalf of the assignee
- only individuals will be permitted to prosecute applications pro se; “non-juristic entities” will need to engage a registered patent practitioner
- new procedures are outlined for handling conflicts between different purported assignees attempting to control prosecution
More To Study
Practitioners should review the Federal Register Notice for the text of the proposed rules and additional nuances revealed in the comments. As noted above, the USPTO will consider written comments on this proposed rulemaking received by March 6, 2012. Members of the public can learn more and voice their comments at one of the sessions of the USPTO’s AIA roadshow being held across the country between February 17 and March 7.