The U.S. Patent and Trademark Office (USPTO) recently indicated that, in order to comply with 37 CFR 1.63(b)(3), an oath or declaration must acknowledge a duty to disclose information material to patentability as defined in 37 CFR 1.56. Accordingly, all oaths or declarations filed on or after June 1, 2008, will be required to include the language expressly set forth in 37 CFR 1.63, including that in 37 CFR 1.63(b)(3). The notice applies to oaths or declarations filed in all non-provisional patent applications, including reissue applications.
According to the USPTO, some applicants continue to use "material to the examination of the application" rather than the express statutory "material to patentability," and "in accordance with 1.56(a)" rather than the express statutory "as defined in 1.56." If an oath or declaration filed on or after June 1, 2008, does not include the express language set forth in 37 CFR 1.63(b)(3), the USPTO will object to the oath or declaration as failing to comply with 37 CFR 1.63. A supplemental oath or declaration pursuant to 37 CFR 1.67 will then be required.
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