Almost All Applications Filed On or After September 16, 2012 Will Require a New Inventor’s Declaration

On Tuesday, August 14, 2012, the United States Patent and Trademark Office (USPTO) published a final rule entitled “Changes to Implement the Inventor’s Oath or Declaration Provisions of the Leahy–Smith America Invents Act.” Among other things, this rulemaking implements 35 USC 115, which changed the requirements for the inventor’s oath or declaration. Amended 35 USC 115(b) provides that the oath or declaration must contain two statements: (1) that the application was made or was authorized to be made by the affiant or declarant, and (2) that the individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application. All oaths or declarations submitted in an application filed on or after September 16, 2012 must meet the requirements of 35 USC 115 as amended by the AIA.

The phrase “or was authorized to be made” is new and does not appear in the current version of the inventor’s declaration. As a result, oaths or declarations submitted in applications filed before September 16, 2012 will not satisfy the statutory requirements for an oath or declaration for an application filed on or after September 16, 2012.

This is especially significant for continuing applications: continuations, divisionals, and continuation-in-part applications. Previously, applicants could submit a copy of the inventor’s oath or declaration from a parent application for a continuation or divisional application of that parent application. However, according to this final rule, starting September 16, 2012, this will no longer be possible if the current oath or declaration does not contain the new statements as above. The oath or declaration that is submitted for a continuing application that was filed on or after September 16, 2012, must satisfy the amended AIA statute. As a result most applications will need a new oath or declaration.

Adding to the problem, the USPTO will no longer review an oath or declaration in an application for compliance with the rules during the examination process. The USPTO will review applications to determine whether the application includes an oath or declaration when the application is in condition for allowance. Therefore it could be many years before the applicant learns that the oath or declaration is defective.

RECOMMENDATION: File continuing applications, continuations, divisionals, and continuation-in-part applications prior to September 16, 2012, if obtaining a new oath or declaration with the signature of the inventors may be a problem. Contact your attorney for other options.

© 2012 Sterne Kessler

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