Department of Commerce United States Patent and Trademark Office 37 Cfr Parts 1 and 3 Changes to Implement the Inventor's Oath or Declaration Provisions of the Leahy-smith America Invents Act

The United States Patent and Trademark Office (Office) proposes changes to the existing rules of practice to implement the inventor’s oath or declaration provisions of the LeahySmith America Invents Act. The Office proposes to revise and clarify the rules of practice relating to the inventor’s oath or declaration, including reissue oaths or declarations, assignments containing oath or declaration statements from inventors, and oaths or declarations signed by parties other than the inventors. In order to better facilitate processing of patent applications, the Office further proposes to revise and clarify the rules of practice for power of attorney and prosecution of an application by an assignee. DATES: Written comments must be received on or before March 6, 2012. ADDRESSES: Comments should be sent be electronic mail message over the Internet addressed to: [email protected]. Comments may also be submitted by mail addressed to: Mail Stop Comments— Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Hiram H. Bernstein, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy. Comments may also be sent by electronic mail message over the Internet via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web site (http:// www.regulations.gov) for additional instructions on providing comments via the Federal eRulemaking Portal. Although comments may be submitted by postal mail, the Office prefers to receive comments by electronic mail message over the Internet because sharing comments with the public is more easily accomplished. Electronic comments are preferred to be submitted in plain text, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. Comments not submitted electronically should be submitted on paper in a format that facilitates convenient digital scanning into ADOBE® portable document format. The comments will be available for public inspection at the Office of the Commissioner for Patents, currently located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also will be available for viewing via the Office’s Internet Web site (http://www.uspto.gov). Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments. FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((571) 272–7707), Senior Legal Advisor, or Eugenia Jones ((571) 272–7727), Senior Legal Advisor, or Terry J. Maciejewski ((571) 272– 7730), Technical Writer-Editor, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy. SUPPLEMENTARY INFORMATION: The Leahy-Smith America Invents Act was enacted into law on September 16, 2011. See Public Law 112–29, 125 Stat. 284 (2011). Section 4 of the Leahy-Smith America Invents Act amends 35 U.S.C. 115 and 118 to change the practice regarding an inventor’s oath or declaration. Section 20 of the LeahySmith America Invents Act amends 35 U.S.C. 116, 184, 251, and 256 (and other statutes) to remove the ‘‘without any deceptive intention’’ provision. This notice proposes changes to the rules of practice to implement the provisions of Section 4 of the Leahy-Smith America Invents Act and the changes in Section 20 of the Leahy-Smith America Invents Act that relate to the removal of the ‘‘without any deceptive intention’’ language from 35 U.S.C. 116, 184, 251, and 256. More specifically, Section 4(a) of the Leahy-Smith America Invents Act amends 35 U.S.C. 115 to change the requirements for an inventor’s oath or declaration. 35 U.S.C. 115(a) provides that an application filed under 35 U.S.C. 111(a) or that commences the national stage under 35 U.S.C. 371 must include, or be amended to include, the name of the inventor for any invention claimed in the application. 35 U.S.C. 115(a) also provides that, except as otherwise provided in 35 U.S.C. 115, each individual who is the inventor or a joint inventor of a claimed invention in an application must execute an oath or declaration in connection with the application. 35 U.S.C. 115(b) provides that an oath or declaration under 35 U.S.C. 115(a) must contain statements that the application was made or was authorized to be made by the affiant or declarant, and the individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application. There is no longer a requirement in the statute that the inventor must state his country of citizenship and that the inventor believes himself or herself to be the ‘‘first’’ inventor of the subject matter (process, machine, manufacture, or composition of matter) sought to be patented. 35 U.S.C. 115(c) provides that the Director may specify additional information relating to the inventor and to the invention that is required to be included in an oath or declaration under 35 U.S.C. 115(a). 35 U.S.C. 115(d)(1) provides that, in lieu of execution of an oath or declaration by an inventor under 35 U.S.C. 115(a), the applicant for patent may provide a substitute statement under the circumstances described in 35 U.S.C. 115(d)(2) and such additional circumstances as the Director specifies by regulation. The circumstances set forth in 35 U.S.C. 115(d)(2) in which the applicant may provide a substitute statement are limited to the situations where an individual is unable to file the oath or declaration under 35 U.S.C. 115(a) because the individual is deceased, under legal incapacity, or cannot be found or reached after diligent effort, or an individual is under an obligation to assign the invention but has refused to make the oath or declaration required under 35 U.S.C. 115(a). Therefore, while an assignee, an obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter may make an application for patent as provided for in 35 U.S.C. 118, an oath or declaration (or an assignment containing the required statements) by each of the inventors is still required, except in the circumstances set forth in 35 U.S.C. 115(d)(2) and in any additional circumstances specified by the Director in the regulations. The contents of a substitute statement are set forth in 35 U.S.C. 115(d)(3). Specifically, the substitute statement must identify the individual to whom the statement applies, set forth the circumstances for the permitted basis for filing the substitute statement in lieu of the oath or declaration under 35 U.S.C. 115(a), and contain any additional information,