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PTO Issues Final Rules to Implement Declaration Provisions of AIA

August 21, 2012

By: James M. Smith

Hamilton Brook Smith Reynolds Alert

In rules effective for applications filed on or after September 16, 2012, the Patent Office is separating the requirements for initiating examination of an application by an applicant (e.g. assignee) from those pertaining to execution of the oath or declaration by inventors. 

An application may be filed by an entity to whom the inventor has assigned or is under an obligation to assign, and may also be filed on behalf of the inventor by an entity that shows sufficient proprietary interest in the matter. In the case of an assignee, an assignment should be recorded no later than the date the issue fee is paid, though best-practice will be to record promptly. In the case of an obligation to assign, appropriate documentation such as an employment agreement should be recorded by that date. In the case of an entity showing proprietary interest, a petition must be filed.

Although an oath or declaration of the inventors is still required, it need not be filed until a notice of allowability issues. However, best-practice will be to file early when the inventors are most likely available. If the inventor is deceased, under legal incapacity, cannot be found or reached after diligent effort, or is under an obligation to assign but has refused to execute an oath or declaration, the applicant may sign a substitute statement in lieu of the oath or declaration.

The required oath or declaration has been simplified, with heavier reliance on an application data sheet to be filed with the application. The application data sheet is required where the application is filed by an entity other than the inventors and in order to claim U.S. or foreign priority. The datasheet will also simplify changes such as in changing inventors or the order of inventors.

The oath or declaration must contain statements that the application was made or was authorized to be made by the declarant and that the individual believes himself or herself to be the original inventor or an original joint inventor. There is no longer a requirement that the country of citizenship be stated. In keeping with the first-to-file approach, there is no requirement that the inventor declare that he believes himself or herself to be the first inventor. A declaration need not identify each inventor or mailing address if that information is included in an application data sheet. Although the declaration need no longer state that the individual has reviewed and understands the contents of the application or acknowledge the duty to disclose information known to be material to patentability, those remain requirements under the rules, albeit undeclared.

The statements required in the declaration may instead be made in an assignment that is recorded.

Interlineation, erasure, cancellation, or other alteration of the application papers may be made after signing provided that the statements in the oath or declaration remain applicable to the application papers.

The new rules affect PCT filings as well. For example, inventors will no longer be required to be designated as applicants in the PCT application. Also, the oath or declaration will not be required in order to meet national requirements, allowing for delay in filing of the declaration until a notice of allowability is received. However, such delay will affect patent term adjustment.

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