United States: Working With Inventors Post-AIA: Managing Inventor Challenges And Preventing Common Mistakes

I. Introduction

The America Invents Act (AIA) was signed into law on September 16, 2011, and changed many provisions of the Patent Act that affect how lawyers and agents should work with their inventors. Many of these changes can present traps for prosecutors and surprises to inventors. This paper alerts practitioners to issues raised by the AIA that impact inventors and what inventors need to understand going forward, so that missteps can be avoided. For example, inventor disclosures and first-to-file practices greatly impact how inventors should conduct themselves relative to disclosures, competitors and research collaborators. This paper also gives recommendations for prosecutors regarding how to handle the day-to-day issues associated with inventor documents, such as oaths, declarations and assignments post-AIA.

II. Inventors Are Not the Only "Inventors" (i.e., Applicants) Under the AIA

A big change brought by the AIA, with respect to inventors, is who can apply for a patent. The AIA provides that someone other than the actual inventor or inventors may apply for a patent.1 An applicant may be any person or "juristic entity," e.g., a corporation or other legally created organization, (1) to whom the inventor has assigned; (2) to whom the inventor is under an obligation to assign; or (3) who otherwise shows sufficient proprietary interest in the matter.2 The 35 U.S.C. § 118 states "A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent." Of course, an application can still be filed in the name of an inventor or in the name of a group of joint inventors.

Thus, post-AIA, the inventor and the applicant are distinguished from one another. As to the difference between an inventor and an applicant, an inventor is a person who must execute the oath or declaration.3 An applicant may take various other actions in the application and can include any of the three categories listed above. Even where the applicant is the assignee, the inventor(s) must still satisfy the requirements for an oath/declaration.

If the application is assigned to an assignee or the inventor is under an obligation to assign it to an assignee, the assignee should be identified as the applicant. Applications filed under the AIA should be submitted with an application data sheet (ADS). While there is no currently issued Code of Federal Regulations (CFR) provision requiring the use of an ADS, the U.S. Patent and Trademark Office (USPTO) has set forth proposed rules requiring the use of an ADS for various purposes, such as identifying an applicant other than an inventor.4 Using ADSs routinely in filings is a best practice.

Best practices dictate that an ADS should be used routinely in all filings to identify the inventors, applicant and the assignee. The newly revised ADS form explicitly separates the applicant from the assignee, and includes a notation that failure to identify the assignee on the ADS will result in no assignee being printed with the publication of the application.

For Patent Cooperation Treaty (PCT) § 371 National Stage applications coming into the United States, the entity or person listed on the request form in the international application is considered the applicant for the corresponding U.S. application. If this information will differ at the national-phase stage, then a Request for Recording of a Change (PCT Rule 92bis) must be filed in the international application or as a new ADS, in the corresponding U.S. case.

III. The Role of "Juristic Entities" as Applicant

Juristic entities are corporations and other non-human entities created by law and given certain legal rights that seek to prosecute an application. Post-AIA, juristic entities may be applicants in patent applications.

The rules regarding juristic entities became effective September 16, 2012, and apply to any paper filed on behalf of a juristic entity on or after September 16, 2012, regardless of the filing date of the application or proceeding.5

For prosecution purposes, however, juristic entities can only act through a registered patent practitioner, even if the juristic entity is the applicant.6 Thus, most papers submitted on behalf of a juristic entity must be signed by a patent practitioner, unless otherwise specified, in accordance with 37 CFR 1.33(b)(3). However, it is important to keep in mind that only a limited number of documents may be signed by a juristic entity. These include: a terminal disclaimer, statement under 37 CFR 3.73(c), power of attorney and a substitute statement.

IV. Proper Assignments from Inventors Are Essential

Proper assignment to an employer or assignee of patent ownership rights is critical to ensure that the rights transfer and can be subsequently transferred or used by the assignee. A patent assignment is a transfer or sale of the entire interest in a patent. In other words, all rights that were originally granted to the inventor(s) will transfer to the assignee. Generally, patent assignments can be made during the application process or after a patent issues. As a best practice, however, we recommend that patent applications be immediately assigned from the inventor(s) to the company so that the company can control the prosecution of the application and can add the patent (when issued) to its portfolio. Although recording an assignment with the USPTO is not required, recordation can protect against confusion as to the true owner of the patent, which may be especially important with any future sales or transactions involving the assignee and the patent(s).

Several issues can impact a company's ownership of patent rights and assignments, but one of the most common is incorrectly drafted employment contracts. Generally, employment contracts bind an employee to assign all inventions and discoveries within the scope of employment to the company. Although, some employment contracts fail to even include such a provision. Some agreements include an erroneous provision that, essentially, has no effect. For instance, a common mistake is to include a provision to a "promise to assign" to a future rather than a present assignment,7 which is not an effective assignment without further action by the employee. In the case where there is simply no employee contract and no agreement with each inventor addressing the assignment of an invention, each co-inventor or prior assignee may retain the right to practice, and perhaps assign, the invention without compensating or even notifying the other co-inventors or assignees.

Assignments can be complicated when the inventors have obligations to former employers.8 If this is the case, the prior employment contracts of the founders and inventors of patents and applications should be examined for provisions that allow a former employer to assert rights in the company's intellectual property (IP) or provisions that limit the former employee's ability to compete in its technology and market areas. University rights may also affect proper assignments, and agreements between universities and inventors of the technology should be studied to ensure that a university cannot assert rights in the company's IP. If the invention/research was funded by the government, the government might retain rights in a patented invention resulting from the government support.9

As a practice note, evidence of ownership (e.g., an assignment, employment agreement, etc.) should be recorded at the USPTO no later than the date the issue fee is paid. Such recordation of assignments, if made using the USPTO electronic system, is free as of January 1, 2014. Also, where the applicant is an assignee or obligated assignee and the real party in interest at the time of allowance has changed, the USPTO should be notified of the change so that the patent can issue to the real party in interest.10 Any changes in the ownership status of a patent should similarly be updated and recorded at the USPTO to avoid confusion.

V. Strategies to Address Potential Issues with Assignments from Inventors

Strategies for handling potential assignment issues with inventors can be as easy as including practical provisions in documents. For instance, an assignment may be included in the company's internal invention disclosure form. Thus, the inventor would essentially execute the assignment when filling out the form. However, it should be noted that if the invention disclosure form is then the assignment of record, it may lose any attorney-client privilege protection and become part of the record when filed at the USPTO. Another practical way to address this is to clarify the inventor's obligation to assign in all initial communications with the inventor. Be sure to use clean/self-serving communications, if later needed to evidence obligation. It is good practice to recommend that your client's employment agreements include a provision that the employee is under an obligation to assign and/or hereby assigns rights to any and all IP developed under his/her employ.

An issue to recognize is that state law will govern whether an assignment is valid, not federal law or the USPTO regulations. Satisfying the USPTO requirements for the oath/declaration may not be sufficient to effect an assignment under state law. Recognize also that some states have a common law obligation to assign, while others do not.

VI. Powers of Attorney and Assignments After the AIA and the Ethical Paradigm

For patent applications filed on or after September 16, 2012, only the applicant may grant a power of attorney. Thus, where the inventors are named as the applicant, an assignee would need to become the applicant by filing a request under 37 CFR 1.46(c) and include a corrected ADS per 37 CFR 1.76(c) and a statement under 37 CFR 3.73(c).

For the power of attorney when derived from the applicant, the USPTO in its AIA Inventor's Oath or Declaration Quick Reference Guide11 recommends using the form PTO/AIA/82, provided by the USPTO. For example, where the applicant is the assignee, the assignee (e.g., the president of the company) may execute the power of attorney (PTO/AIA/82B or an equivalent) without need to resort to §§ 3.71 and 3.73. The patent practitioner may complete and sign the accompanying transmittal letter (PTO/AIA/82A) and submit a copy of the power of attorney into each respective application.12

An assignee who was not named as the applicant who wishes to appoint a patent practitioner must proceed under §§ 3.71 and 3.73 and file a statement under 37 CFR 3.73(c) (PTO/AIA/96) and a power of attorney (PTO/AIA/80).13

A copy of a power of attorney may not be used if a new applicant is being named in a continuing application, e.g., in the prior application, the power of attorney was given by the inventors and the continuing application is filed by a juristic entity.14

A power of attorney given by inventors remains in effect where (1) a 37 CFR 1.48 request in a pending application or (2) a continuing application adds an inventor, if the added inventor supplies a power consistent with the initial power and a copy of the power is supplied in the continuing application.15

Post-AIA, using a combined declaration and power of attorney is no longer recommended by the USPTO. Under the AIA, a proper power of attorney must:

  1. Be in writing
  2. Name one or more representatives
  3. Give the representative power to act on behalf of the principal
  4. Be signed by the applicant or the patent owner16

A side note here addresses a potential ethical issue that may be associated with a power of attorney. As recognized by the patent ethics expert, Prof. David Hricik from Mercer University, an ethical paradigm can exist when getting/receiving a power of attorney and assignment. Prof. Hricik describes the paradigm as the following: BigCo hires you to file a patent application and tells you that Inventor is subject to an obligation to assign, but there is no such obligation. If you give Inventor the assignment and a power of attorney for you, you have three major risks that many other lawyers have had to litigate—often successfully, but not always. First, under Rule 4.3, you are likely going to be viewed as providing advice to an unrepresented person with interests adverse to your client. Second, under some states, you have an affirmative legal obligation to warn people who might reasonably believe that you represent them that you don't. Third, you may be deemed to have formed an attorney-client relationship with the inventor. So, be very thoughtful before you obtain a power of attorney from an inventor.17

As a best practice, avoid getting a power of attorney directly from inventors where your attorney-client relationship is with their employer. As a means to handle this paradigm should you have to, consider transmitting the power of attorney with an e-mail that simply says, "As you know, I do not represent you; I only represent BigCo and, because you have assigned your rights to BigCo, I will work with you to file the patent application."

Also, pursuant to the AIA, the Power of Attorney by Applicant form, PTO/AIA/82 has been updated to provide a box where a juristic entity applicant may be identified and contains "authorization to act" language for use by an individual who may not have a title that carries apparent authority but who is authorized to act on behalf of a juristic entity applicant.18

VII. Handling Documents for Uncooperative or Unavailable Inventors

Issues can arise with respect to ownership and filing requirements when inventors are either unavailable or uncooperative. The AIA relaxed some of the provisions that had previously made advancing USPTO prosecution very expensive and difficult in such situations.19

The AIA provides that substitute statements (www.uspto.gov/forms) may be used as an alternative to a traditional oath/declaration if the inventor is either:

  1. Dead
  2. Under legal incapacity
  3. Missing after diligent effort
  4. Under an obligation to assign but refuses to make oath/declaration

Substitute statements must identify: (1) the individual to whom the statement applies; (2) the circumstances or basis for filing the substitute declaration; (3) the person executing the substitute statement and their relationship to the nonsigning inventor; and (4) the last known address of the nonsigning inventor. Note that a patent practitioner cannot sign a substitute statement on behalf of the applicant with just a power of attorney. To sign a substitute statement, a patent practitioner must have binding authority (e.g., given by corporate resolution from a board of directors).20 Thus, such substitute statements should be made by a person of authority associated with the assignee.

An applicant who is an assignee or obligated assignee does not need to file a petition or provide proof of the pertinent facts in order to be named as the applicant or execute a substitute statement. Though proof is not required to be submitted to the USPTO, proof of attempt to secure the inventor's signature should be kept in the applicant's file. The AIA did not change what is considered a good faith attempt to contact an inventor and what constitutes a refusal to sign.21

VIII. Inventors Must Understand Key Facts Regarding Impact of the AIA FTF and Disclosures of Their Invention(s)

Prior to March 16, 2013, the United States was primarily a "first-to-invent" system, meaning that the first (senior) true inventor was the actual inventor, even if a second (junior) inventor filed before the senior inventor. However, per the AIA, on March 16, 2013, the United States became a first-to-file (FTF) system, which is the standard of most foreign jurisdictions. Although the change seems subtle, it has potential major implications that inventors need to understand.

As an example, under the old system, if an inventor had a new device and he/she manufactured it but did not disclose it, he/she would be safe from having someone obtain superior rights over that invention. Under the new FTF system, however, that same inventor would not be protected from a junior party being able to patent the invention first, except in very limited circumstances. Thus, it is possible that the junior inventor could file and receive a patent first, and the claims that issue could read on the senior inventor's invention making him an infringer! This is an extreme example, but totally possible under the FTF system. Further, an inventor needs to understand that under the AIA, if the inventor does not file a patent application or disclose the invention prior to the junior inventor's filing, then the original inventor would not have an intervening disclosure that could be used as prior art against the second patent application.22

In another example, say an inventor publicly discloses a genus on day one, and a third party independently discloses a species of that genus on day two. If the inventor files a U.S. patent application on day three, the result is now that the species disclosed on day two is prior art to inventor's genus application filed on day three. For applications filed after March 16, 2013, the applicant may file a declaration if the disclosure was made by the inventor within one year of the effective filing date or the subject matter of prior disclosure was obtained directly or indirectly from the inventor. The 37 CFR 1.130(a) and 1.130(b) declaration needs to identify subject matter publicly disclosed; provide the date of prior public disclosure; provide a copy of printed publication, if any; or describe in sufficient detail and particularity what was publicly disclosed.

Because of these and other potential scenarios, there are several questions that should be posed to the inventor at the beginning of a patent application project. First, ask the inventor if the invention has been disclosed. If yes, then find out if the disclosure was public (e.g., at a trade show talk) or private (e.g., to a customer). If it was a private disclosure, you need to find out whether there was a confidentiality agreement or nondisclosure agreement in place. If an agreement was not in place, this disclosure may be prior art, and it may be best to file as quickly as possible. If the disclosure was public, it needs to be the "same subject matter," so as to not be used as prior art against the inventor's application, and the application needs to be filed within one year. If it was not the same subject matter, then filing or disclosing fully to protect the inventor's rights might be the best option. Disclosing would hinder anyone from patenting the idea out from under the inventor.23

In the FTF system, applications should be drafted and filed quickly and completely. To do this, make sure to streamline drafting and filing procedures. The risk that a competitor will beat you to the USPTO during any delays is too high to justify the delay. If you work with outside counsel, you should only work with outside counsel who has sufficient staffing to meet these deadlines and who has proven procedures to ensure compliance.

IX. Inventors Must Understand that Bare-Bones Provisional Applications Now Have More Limited Use

Pre-AIA, inventors often preferred to file bare-bones provisional applications to secure a date, while funding or research efforts continued. The AIA changed the practical ability of filing a bare-bones provisional, especially to support later-filed PCT applications.

To secure valid priority to the earliest or provisional filing date, the provisional application's disclosure must describe and enable the full scope of the later-claimed invention. If filing a provisional application is going to divest a first-in-time inventor of his or her right to get a patent, the provisional application is required to be a complete disclosure.24

Educating inventors about the need for more fleshed-out information is a must now.

X. Inventors Must Understand that the AIA Broadened the Definition of Prior Art

An entirely separate article could be devoted to changes the AIA made in terms of what is considered prior art in the United States. For these purposes, it is important to make inventors understand that certain activities and events are now considered prior art, no matter where they take place in the world.

The AIA effectively broadens the scope of prior art to which an invention is compared in determining patentability or patent validity. For applications with a priority date on or after March 16, 2013, prior art will include anything "in public use, on sale, or otherwise available to the public" anywhere in the world. Further, inventors must understand that all disclosures are prior art, with the temporary exceptions of some disclosures by an inventor, joint inventor or a third party who obtained the subject matter from the inventor or joint inventor.25

Under the old regime, inventors had a one-year grace period after a public disclosure to file a patent application describing their invention. Within the one-year grace period, the new invention remained patentable to the inventor, regardless of who made the public disclosure. Starting March 16, 2013, the one-year grace period only protects disclosures made by or derived from the inventor. Everything else that occurs during the one-year grace period will destroy patentability. This change applies to public disclosures (for example, publications or presentations), public use or sales anywhere in the world. Thus, acts of an unrelated third party can destroy the patentability of an invention.

Because of these changes, in effect, the AIA should change how researchers interact with others, especially in joint-development situations. Inventors (and their patent practitioners) should consider how the prior art redefinition will impact their relationships with their collaborators. Since first-to-invent is no longer the standard, researchers should carefully consider any disclosures (even informal disclosures to collaborators) before they are made. If a collaborator discloses an invention that is not his/hers, an inventor must be able to prove that the invention was derived from his/her work. Because potential derivation defenses to overcome prior art are now more important, it is imperative for inventors to keep good records of conversations and meetings with collaborators. Researchers need to create a record of their ideas and activities in case proof of contribution to an invention needs to be established.26

XI. Make Sure Inventors Are Savvy About Competitors and the Race to the PTO

The FTF system effectively creates a race to the Patent Office to file first on developing technology amongst competitors.

When dealing with inventors, it is important to help them understand this race and how what they disclose or publish in any format, whether formal or informal, can affect it. Caution inventors to be careful not to disclose or publish information regarding research and development projects in progress, to avoid prompting others to file patent applications or publish subject matter that could be used as prior art against any future applications the inventor may file directed to that technology. In other words, such disclosures could trigger competitors to file applications offensively to effectively steal or block the inventor's rights to the technology.

Similarly, monitoring competitor and collaborator publications for indications of potential innovation may be useful in gaining a competitive edge, allowing offensive filing for blocking and tackling purposes. As part of that, filing provisional applications quickly, if needed, to try to preserve dates may enable you to beat your competitors to the rights in the technology.

Another strategy to conserve competitive space is to publish defensive publications to prevent competitors from patenting the concept, recognizing that any such publications may also block inventor patenting. If such a strategy is employed, it is important to include all details in the publication that are foreseeable. Anything left on the table may provide fodder for competitor patenting.

XII. Inventor Records as Evidence in Potential Derivation Proceedings

The AIA created a new proceeding, a derivation proceeding, for disputes between two applicants about who is the true inventor. It aims to ensure that the person obtaining a patent is a true inventor and did not derive the invention from another. This, in a sense, replaces the former interference proceedings. As stated above, to improve the odds of winning such disputes, inventors should maintain records (e.g., laboratory notebooks) to show independent development of the invention as evidence in a derivation proceeding.

A caution, however, is that records can come back to haunt the inventor or patent owner in later infringement litigation, for example, in claim construction or inequitable conduct inquiries. Balancing the risks of maintaining records with creating potential litigation ammunition for a defendant is essential. Most likely, the balance will be company and even project dependent.

Inventors keeping records can be particularly important in collaborations and joint development situations to show what was disclosed when, for derivation purposes. Any records of disclosures that note audience and purpose may help prove what subject matter was disclosed, for calculating grace period purposes.

XIII. Practical Inventor Handling Issues: Inventor Oaths and Declarations After the AIA27

In many ways, the AIA relaxed the requirements for proceeding with prosecution without an inventor-executed oath or declaration. Section 4 of the AIA enacted numerous changes to 35 U.S.C. §§ 115 and 118 that affect inventor oaths and declarations.

Except in limited circumstances, each inventor must execute an oath or a declaration in a patent application. Under the new rules, an inventor can authorize an application to be made before it is prepared. An oath/declaration can be combined with assignment. An oath/declaration can be submitted any time, if an ADS is submitted in the application prior to examination. Similarly, if an ADS is filed, an inventor does not have to list the entire inventive entity in the oath/declaration (i.e., a separate oath/declaration can be prepared and filed for each inventor). Current forms for oaths and declarations can be found at the USPTO website at the following link: www.uspto.gov/forms.28

For oaths and declarations for applications filing on or after September 16, 2012, the new AIA rules apply. An inventor oath/declaration must: (1) Include each inventor's name. (If joint inventors, each sign his/her own oath/declaration.) As long as an ADS is filed, separate oaths can be prepared and submitted for each inventor. (Note, however, that oaths/declarations that name the entire inventive entity can still be used.) (2) Identify the application to which the oath or declaration is directed. (3) Make a statement to the effect, "I believe that I am the original inventor or an original joint inventor of a claimed invention in the application." (4) Affirm that the application was made by or authorized to be made by the declarant. If an ADS has not been filed in the case, additional statements may be needed.29

Under the AIA, the assignment may contain the declaration. If you file an assignment containing a declaration or vice versa, you "must include" the oath/declaration statements listed above in the assignment and include a "conspicuous" indication that the documents are combined, e.g., checkbox on recordal transmittal. Note that filing these together will not "record" the assignment, but a copy of the assignment recording with the checkbox will be placed in the application file.

An oath/declaration can be filed at any time before allowance (and up to three months after receiving a notice of allowability). WARNING: for PCT applications, there are patent term adjustment consequences for delayed submission of executed declaration.30

XIV. Transition Applications Require an Extra Statement

Whether the new AIA rules apply to an application for oath/declaration purposes depends on the filing date of the application. Transition applications are those filed after March 15, 2013 (including 371 national stage applications, with an international filing date before September 16, 2012). The 371 national stage transition applications must comply with the old requirements for inventor oaths/declarations. During the transition period, make sure the oath/declaration meets the requirements for the application in question.

If a nonprovisional application filed on or after March 16, 2013, claims the benefit of or priority to an application filed before March 16, 2013, and the application contains at least one claim not having priority before March 16, 2013, the applicant must provide a statement within certain time periods. Statements in transition applications inform the USPTO that post-AIA prior art rule should be applied in the application. The applicant statement must assert that the transition application contains or ever contained a claim with an effective filing date of on or after March 16, 2013. This statement must be filed four months from the actual filing date of the transition application or national stage entry, 16 months from the filing date of the prior application, or the date of the first claim that had an effective filing date on or after March 16, 2013, was added. Note that the statement does not need to identify which claims are post-AIA or unclaimed subject matter, as proposed originally by the USPTO.

XV. USPTO Recommendations for Oaths and Declarations

The USPTO recommends that practitioners use the USPTO declaration form PTO/AIA/01 with an ADS, which includes the new statutory statements required for an oath:

  1. The application was made or authorized to be made by the person executing the Declaration
  2. The individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application
  3. An acknowledgment of penalties clause referring to fine or imprisonment of not more than five years, or both

Using the USPTO declaration forms ensures the correct language is included. Use of USPTO forms is not mandatory, but it is strongly recommended. When modifying a USPTO form, be sure to remove all indications that it is an office form (e.g., SB or AIA designation).31

Each declaration needs only to identify the inventor who executes the declaration, as long as an ADS is submitted identifying the entire inventive entity. Inventors can continue to execute declarations that name the entire inventive entity.32

A practice note: to avoid payment of a surcharge, an inventor's oath/declaration, including a substitute statement, executed by or with respect to each inventor must be submitted on the same day as the nonprovisional application is filed.33

Copies of declarations of prior applications filed before September 16, 2012, can be used in some instances. A copy of a declaration from a prior application may only be submitted in an application filed on or after September 16, 2012, if the declaration meets the requirements of amended 35 U.S.C. 115(a), which must include the required statements in 35 U.S.C. 115(b). The copy of the declaration must also include the acknowledgement of penalties clause in 35 U.S.C. 115(i), referring to fine or imprisonment of not more than five years, or both.

For applications entering the national stage under 35 U.S.C. 371 on or after September 16, 2012, where the international application was filed prior to September 16, 2012, the declaration must comply with the pre-AIA provisions.

XVI. Editing the Application After the Declaration Is Signed Is Now Allowed

The AIA removes the prohibition for modifying the application once the declaration has been signed. The new rules specifically allow for modification after signing.

XVII. Correction of Inventorship Post-AIA

The changes to the correction of inventorship rule, 37 CFR 1.48, were effective on September 16, 2012, and apply to any request to correct inventorship filed on or after September 16, 2012, regardless of the application filing date. The AIA removed the requirements to state that the error occurred without deceptive intent to correct inventorship and that the original inventorship is in error. Notably, the consent of assignee is no longer needed. To correct inventorship, you can file a new, signed ADS and pay the processing fee.

An ADS must identify with markings any changes in information from what was provided in a prior ADS or information otherwise of record. New information must be underlined, and deleted information must be shown using strikethrough or brackets.

The ADS can, however, be limited to showing only the section(s) of the ADS that contain the changed information. The requirement to identify changed information applies to all ADSs, regardless of the application or proceeding filing date, under both versions of 37 CFR 1.76.

Note that even for an application filed before September 16, 2012, applicants must file a supplemental ADS that includes markings and all of the sections—rather than a corrected ADS—to change the information.34 See MPEP 601.05 for more information.

When a request to correct or change the inventorship of the application is filed after a first office action on the merits (FOAM) has been mailed, another fee is due unless a statement is made that the request is due solely to the cancellation of claims in the application.

For §371 national stage applications, inventorship can be corrected by filing an ADS with the application. If an ADS is not filed with the U.S. national stage application, then the national stage inventors will be those listed on the PCT.

Note that if you are adding an inventor, that inventor will need to submit an oath/declaration as well.

XVIII. Application Data Sheets—Our Best Friend

An ADS should be submitted with all applications as a best practice, especially now that the AIA has increased its importance.

For instance, pre-AIA priority claims could be made in the ADS or the first sentence of the application. Under the AIA, each claim for domestic or foreign priority (except foreign priority in a national stage application) must be present in an ADS for applications filed on or after September 16, 2012.

They are now required, however, if:

  1. the submission of an inventor's oath or declaration is to be delayed;
  2. each inventor's oath or declaration identifies only the inventor (or person) executing that particular oath or declaration and not all of the inventors;
  3. there is a claim for domestic benefit (37 CFR 1.78) or foreign priority claim (37 CFR 1.55) (except foreign priority for national stage applications); or
  4. there is an identification of applicants other than the inventors under 37 CFR 1.46 (except for national stage applications in which the applicant is the person identified in the international stage)35

As per the AIA Inventor's Oath or Declaration Quick Reference Guide, to submit an ADS with a new application, the USPTO recommends that you use the newly revised (08/2012) form PTO/AIA/14 (see www.uspto.gov for a copy) and follow these instructions:

  1. Submit the fillable form via EFS-Web with the application. Doing so will cause the bibliographic data to automatically load into USPTO electronic systems. Scanning or printing as a PDF will cause USPTO staff to have to manually enter the data.
  2. The ADS includes a new applicant information section to identify non-inventor applicants. Note, when the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership should be recorded in the assignment records no later than payment of the issue fee. (37 CFR 1.46(b)(1))
  3. If the applicant is a juristic entity, the ADS may only be signed by a patent practitioner. For other applicants, the ADS may be signed by either the applicant or a patent practitioner. (37 CFR 1.33(b))
  4. All benefit claims under 37 CFR 1.78 and foreign priority claims under 37 CFR 1.55 must be set forth in an ADS. For applications entering the national stage under 35 U.S.C. 371, foreign priority claims are not required to be set forth in the ADS.

Foreign priority claims in these applications must have been timely made in the international phase of the PCT request form or in a notice from the applicant.

An ADS must contain each claim for domestic benefit under 37 C.F.R. 1.78 or each claim for foreign priority under 37 C.F.R. 1.55 (except foreign priority claims in a national stage application). Note that the ADS does not constitute an express incorporation by reference of the prior application into the subject application.

An express incorporation by reference must be set forth in the specification of the subject application filed to include that subject matter in the disclosure of the application.36

The ADS form (PTO/AIA/14) is available at http://www.uspto.gov/forms.

XIX. Foreign Issues that May Arise as a Result of Certain Oath and Declaration Issues

Under the provisions of the AIA, a combined declaration and assignment is expressly allowed. Moreover, an applicant may postpone the filing of that declaration and assignment until the application is allowed. While it is good practice to secure these documents as soon as possible, in some cases it may be advisable to secure the documents even before filing the original application (whether PCT or in an individual nation). Some jurisdictions, such as Germany, allow for inventors' rights that are secured at the time of filing in the absence of an express assignment before the filing. Thus, it is good practice to secure an executed declaration and assignment, or at least the assignment, for any inventors who reside in jurisdictions outside of those where you are assured that the obligation to assign can be proven with existing records.

XX. Accelerated Examination Options

Inventors should be aware that prosecution can be accelerated if that is of benefit. The AIA provided an accelerated examination (AE) procedure called Track One. AE can greatly decrease the length of prosecution. For instance, in the Track One and AE programs, applicants receive a first FOAM in less than five months and a final decision from the examiner within 12 months from the grant of the request. The Patent Prosecution Highway (PPH) can similarly be used to accelerate examination. In the PPH program, applicants receive a FOAM within two to three months from the grant of the request. Using expedited examination may enhance business objectives, including commercialization strategies, enforcement activities, capital attracting and reduction of perceived risk by investors or licensees.

XXI. Inventors Should Understand that Patents Can Be Challenged Post-Grant Under the AIA

Lastly, the AIA created these new administrative procedures that enable third parties to challenge the validity of a granted patent, Post-Grant Review (PGR), inter partes review (IPR) and Covered Business Method (CBM) procedures. PGR must be requested within nine months of a patent grant and applies only to patents with a priority date on or after March 16, 2013. Any possible grounds for invalidation may be considered in this procedure. IPR, like ex parte reexamination, may be based only on patents and printed publications and 35 U.S.C. § 102 and 103 grounds. As of September 16, 2012, all patents are subject to possible inter partes review, including older patents that were not previously eligible under the former inter partes reexamination procedure. Both post-grant and inter partes reviews are handled by administrative law judges. Limited discovery is permitted in both procedures. This is important for inventors to understand as both an offensive as well as defensive tool.

The AIA further provides a new transitional procedure for challenging the validity of any already-issued business method patent, in accordance with the standards and procedures of post-grant review.

Still another unique aspect of the revised AIA U.S. patent system is a procedure known as supplemental examination. This procedure allows a patent owner to request supplemental examination of a patent to permit consideration, reconsideration or correction of information that may be relevant to the validity of the patent.

XXII. Conclusion

The AIA provided many changes to U.S. patent law, some of which were subtle and some of which were more dramatic. In either event, inventors have been impacted. To effectively work with inventors in this post-AIA world, it is important to understand the different intersections of the AIA and inventors. In many instances, educating the inventor is the best way to ensure success.


1. 35 USC § 118.

2. 37 CFR § 1.42.

3. 37 CFR § 1.63.

4. Federal Register Volume 77, Number 4 (Friday, January 6, 2012).

5. See Jones et al., The Impact of AIA and Related Current Developments on My Daily Life: A Walk Through the Changes to the Inventor's Oath and Prioritized Examination, with a Nod to the New Derivation Proceedings and a Consideration of the New Fee Proposal.

6. See 37 CFR 1.31.

7.Bd. Of Trs. Of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 131 S.Ct. 2188 (2011).

8. Id.

9. Michael Best & Friedrich Blog Post, May 25, 2011, Patent Rights and Attracting Investors.

10. 37 CFR 1.46(e).

11. AIA Inventor's Oath or Declaration Quick Reference Guide, United States Patent and Trademark Office, http://www.uspto.gov/aia_implementation/inventors-oath-or-declaration-quick-reference-guide.pdf.

12. AIA Inventor's Oath or Declaration Quick Reference Guide, United States Patent and Trademark Office, http://www.uspto.gov/aia_implementation/inventors-oath-or-declaration-quick-reference-guide.pdf.

13. AIA Inventor's Oath or Declaration Quick Reference Guide, United States Patent and Trademark Office, http://www.uspto.gov/aia_implementation/inventors-oath-or-declaration-quick-reference-guide.pdf.

14. Id.

15. Id.

16. Id.

17. Patently-O Blog Posting, Prof. David Hricik.

18. Id.

19. Using the American Invents Act to Your Advantage: Addressing Inventor Issues Before They Materialize, www.ip-firm.com, Crawford Maunu PLLC.

20. AIA Inventor's Oath or Declaration Quick Reference Guide, United States Patent and Trademark Office, http://www.uspto.gov/aia_implementation/inventors-oath-or-declaration-quick-reference-guide.pdf.

21. Id.

22. Sicard, Intellectual Property Law: Disclosure: How it Can Hurt (Or Help) Under the New Patent Standards, New Hampshire Bar Association, Bar News, June 21, 2013.

23. Id.

24. See, e.g., Novazymes A/S v. DuPont Nutrition Biosciences APS, No. 2012-1433 (Fed. Cir. July 22, 2013) (Precedential).

25. 35 U.S.C. § 102.

26. See, e.g., Johns Hopkins University, Technology Transfer Office, Guidelines for Inventors from the AIA, http://techtransfer.jhu.edu/faculty/patents/aia/aia_5changes.html.

27. See Jones et al., The Impact of AIA and Related Current Developments on My Daily Life: A Walk Through the Changes to the Inventor's Oath and Prioritized Examination, with a Nod to the New Derivation Proceedings and a Consideration of the New Fee Proposal.

28. AIA Inventor's Oath or Declaration Quick Reference Guide, United States Patent and Trademark Office, http://www.uspto.gov/aia_implementation/inventors-oath-or-declaration-quick-reference-guide.pdf.

29. Id.

30. Id.

31. Id.; see also 37 CFR 1.4(d)(3).

32. Id.

33. Id.

34. See Manual of Patent Examining Procedure, 601.05.

35. Id. Note that while the MPEP and the CFR still consider the ADS to be optional for these matters, the PTO guidance and practice make it mandatory, see http://www.uspto.gov/aia_implementation/inventors-oath-or-declaration-quick-reference-guide.pdf.

36. Id.

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