On August 14, 2012, the USPTO issued final rules, effective
September 16, 2012, that implement provisions of the Leahy-Smith
America Invents Act related to an inventor's oath or
declaration. The rules streamline the statements required in an
inventor's oath or declaration and permit these statements to
be included in an assignment. In lieu of an inventor's oath or
declaration, a substitute statement can be filed in certain
circumstances. Further, the filing of the inventor's oath or
declaration can now be delayed until an application is in condition
for allowance. The rules also modify existing practice by relaxing
the requirement that only inventors may be an applicant for a
patent application and now permitting an assignee to be an
applicant for a patent application.
Under Rule 1.63, the inventor's oath or declaration must: (1)
identify the inventor, using the inventor's legal name; (2)
identify the application; (3) include a statement that the inventor
believes to be the original or joint inventor of a claimed
invention in the application; and (4) state that the application
was made or authorized to be made by the inventor. The inventor may
not execute the oath unless the person has reviewed and understands
the contents of the application and is aware of the duty of
disclosure under Rule 1.56. For an inventor declaration, the
declaration needs to additionally indicate that the inventor
acknowledges that any willful false statements made in the
declaration is punishable by fine or imprisonment of not more than
five years.
Compared to previous practice, the inventor's citizenship is no
longer required in the inventor's oath or declaration. Further,
the inventor's oath or declaration no longer needs to list all
of the joint inventors or include the claim for foreign priority,
as long as this information is submitted with a signed application
data sheet. Additionally, if the signed application data sheet (1)
identifies each inventor, using each inventor's legal name, (2)
provides a mailing address for each inventor, and (3) provides a
residence for each inventor, this information does not need to be
included in the inventor's oath or declaration.
Per Rule 1.63(e), the statements required in an inventor's oath
or declaration may now be combined with an assignment. If so, the
assignment must be recorded with the USPTO. Under Rule 1.64, in
lieu of an oath or declaration, a substitute statement may be
executed by the assignee (as the applicant) if the inventor is
deceased, is under a legal incapacity, has refused to execute an
oath or declaration, or cannot be located after diligent effort.
The substitute statement needs to comply with the requirements of
Rule 1.63.
Under Rules 1.53 and 1.495, the inventor's oath or declaration
does not need to be filed until the application is in condition for
allowance. For example, if the application is filed with the
applicable fees (e.g., filing fee, examination fee, search fee, any
excess claim fee, and any application size fee) and the surcharge
fee, but is not filed with an inventor's oath or declaration,
the USPTO will no longer issue a Notice to File Missing Parts.
Instead, once the application is in condition for allowance and if
an inventor's oath or declaration has not been filed, the USPTO
will mail a Notice of Allowability (but not a Notice of Allowance
and Issue Fee(s) Due). The Notice of Allowability will set a
non-extendable time period of three months to submit the missing
inventor's oath or declaration. Once the missing inventor's
oath or declaration is filed, the USPTO will then mail a Notice of
Allowance and Issue Fee(s) Due.
Finally, an assignee can be the "applicant" of a patent
application. The USPTO no longer limits the applicant of a patent
application to be one or more inventors. To do so, under Rule 1.76,
the application data sheet now includes a section entitled
"applicant," in which the assignee can be named as the
applicant. If the inventor (and not the assignee) is the applicant,
this section may be left blank.
To assist applicants, the USPTO is providing some patent forms that
implement these new rules. See http://www.uspto.gov/forms/aia_forms_preview.jsp.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.