Filing and Prosecution by Assignee

The AIA amends 35 USC § 118 to permit filing and prosecution of U.S. patent applications by a “person to whom the inventor has assigned or is under an obligation to assign the invention,” or by a “person who otherwise shows sufficient proprietary interest in the matter.” This change applies only to applications filed on or after September 16, 2012.

The USPTO’s final rules implement this change in new 37 CFR § 1.46. The rules require that an assignee or obligated assignee record “documentary evidence of ownership … no later than the date the issue fee is paid in the application.” The rules require that “a person who otherwise shows sufficient proprietary interest” submit a petition that includes a showing of the sufficient proprietary interest and a statement to the effect that permitting the person to file the application “is appropriate to preserve the rights of the parties.”

Under new 37 CFR §§ 1.31, 1.32, and 1.33, if the assignee is the applicant, the assignee (rather than the inventor(s)) can and should execute a power of attorney designating one or more patent practitioners to act on its behalf.

Inventor Oath/Declaration Requirements

The AIA makes several changes to 35 USC § 115 that affect the inventor oath/declaration, relating to both the timing and content requirements. These changes apply only to applications filed on or after September 16, 2012, without regard to any priority claim, and regardless of when the oath/declaration is executed.

The USPTO emphasizes that both the statute and the implementing rules still require an executed oath/declaration by each inventor unless one of the traditional exceptions apply (e.g., unless an inventor is deceased, legally incapacitated, refuses to execute an oath/declaration, or cannot be found or reached after diligent effort, in which case a “Substitute Statement” can be filed by the applicant). However, pursuant to the AIA, submission of the executed oath/declaration can be postponed until the application is otherwise in condition for allowance as long as the inventorship information is set forth in an application data sheet (ADS) that is filed with the application or within the Missing Parts/Missing Requirements response period.

To satisfy this requirement, the ADS must list:

• The legal name of each inventor
• A mailing address for each inventor
• A residence address (e.g., city and country) for each inventor

Any changes in inventorship made after an ADS or executed oath/declaration is filed must comply with the rules for correcting inventorship, which are simplified, as outlined below.

The USPTO warns that taking advantage of this new option to delay filing of an executed inventor oath/declaration in a U.S. national stage application could prevent the application from accruing patent term adjustment if the USPTO fails to issue a first Office Action or Notice of Allowance in a timely manner. This is because the patent term adjustment statute gives the USPTO 14 months from “the date on which an international application fulfilled the requirements of section 371,” and 35 USC § 371(c)(4) requires an executed inventor oath/declaration.

The AIA imposes new substantive requirements on the inventor oath/declaration. As set forth in the final rules, the USPTO has decided to simplify the inventor oath/declaration requirements to minimize the amount of additional information required. Thus, for applications filed on or after September 16, 2012, the inventor oath/declaration need only:

• Identify the inventor/joint inventor executing the oath/declaration by his/her legal name (The commentary in the Federal Register Notices makes clear that a given oath/declaration need not list all joint inventors, only the person executing the oath/declaration at issue)
• Identify the application to which it is directed
• Include a statement that the person executing the oath or declaration believes he/she to be the original inventor or an original joint inventor of a claimed invention in the application state that the application was made or authorized to be made by the person executing the oath/declaration
• Include an acknowledgment that any willful false statement made in such declaration or statement is punishable under 18 USC § 1001 by fine or imprisonment of not more than five years, or both, unless the oath/declaration satisfies the requirements of 37 CFR § 1.66 (relating to oaths made before certain persons authorized to administer oaths)

In addition, the following information must be provided in the oath/declaration or in an ADS:

• The legal name of each inventor
• A mailing address for each inventor
• A residence address (e.g., city and country) for each inventor

The final rules no longer require the oath/declaration to state that the person executing the document “has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56,” but the rules do provide that “[a] person may not execute” an oath/declaration unless these requirements are met.

With regard to continuing applications, the final rules provide that a new inventor oath/declaration is not required from inventors who submitted a compliant oath/declaration in the previous application, as long as a copy is filed in the continuing application. However, in view of the new statements required by the AIA, continuing applications filed on or after September 16, 2012 based on applications filed before September 16, 2012 may require new inventor oath/declaration documents to comply with the new requirements.

The AIA permits combined assignment/declaration documents. That is, an assignment can be used to satisfy the inventor oath/declaration requirement as long as the assignment includes the statements required for an inventor oath/declaration, is recorded, and is filed in the application. To ensure that assignment documents are handled properly, new 37 CFR § 3.31 requires the assignment recordation cover sheet to “contain a conspicuous indication of an intent to utilize the assignment as the required oath or declaration.”

Reissue Application Practice

The final rules make several changes to reissue application practice, including:

• Deleting the requirement for a reissue inventor oath/declaration to aver that all errors arose without any deceptive intent on the part of the applicant
• Eliminating the requirement for a supplemental inventor oath/declaration
• Requiring the inventor oath/declaration to identify a claim that the application seeks to broaden, if the reissue application seeks to enlarge the scope of the claims
• Clarifying that presenting a single claim containing both a broadening and a narrowing of the claimed invention is to be treated as a broadening reissue
• Permitting an assignee of the entire interest who filed an application under 35 USC § 118 to sign the inventor oath/declaration even if the reissue application is a broadening reissue

Correction of Inventorship

The final rules simplify the procedures for correcting inventorship. New 37 CFR § 1.41 provides that inventorship initially will be determined from the ADS or executed inventor oath/declaration filed in a non-provisional application, the cover sheet filed in a provisional application, or the ADS or international application for a U.S. national stage application.

Correction of inventorship in a non-provisional application will require only:

• An ADS listing the correct inventors
• The processing fee set forth in 37 CFR § 1.17(i)
• An executed inventor’s oath/declaration for any added inventors

Correction of inventorship in a provisional application will require only:

• A request to correct the inventorship that identifies each inventor by legal name
• The processing fee set forth in 37 CFR § 1.17(q)

Correcting the names or order of inventors will require only:

• An ADS listing the correct information/order
• The processing fee set forth in 37 CFR § 1.17(i)

Different rules apply to the correction of inventorship in a patent, in a reissue application, or in an interference or contested case.

Heightened Importance of Application Data Sheets

As the foregoing summary indicates, the new rules place heightened importance on ADS documents, which are held by new 37 CFR § 1.76 to be part of the application for which they are submitted. For applications filed on or after September 16, 2012, the ADS will be used to:

• Designate the applicant
• Designate/correct inventorship
• Make a priority claim to an earlier U.S. application
• Make a priority claim to an earlier foreign application

The final rules eliminate any distinction between an original and “supplemental” ADS, and require that all ADS documents be signed.

Elimination of “Without Deceptive Intent” Requirements

The AIA eliminated the requirement that applicants aver that certain errors arose “without deceptive intent” in order to seek correction of those errors. The final rules implement these changes by removing the “without deceptive intent” requirements from provisions relating to the correction of inventorship, the correction of errors in a reissue application, and petitions for retroactive foreign filing licenses. These changes apply to any proceedings commenced on or after September 16, 2012.

For additional information, please see:

USPTO Issues Final Rules Establishing Post-Grant Trial Procedures Under the AIA

USPTO AIA Final Rules Provide for New Supplemental Examination Procedure and Third-Party Preissuance Submissions

Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and colleagues. If you have any questions about this Alert or would like to discuss the topic further, please contact your Foley attorney or the following:

Courtenay C. Brinckerhoff
Chair, IP Law and Practice
Washington, D.C.
202.295.4094
cbrinckerhoff@foley.com