America Invents Act Final Rule: Inventor’s Oath or Declaration

The America Invents Act allows for assignees to file a patent application as the applicant, whereas previously a person to whom the inventor had assigned an invention could file the application, but the inventor remained the applicant. This changes the system from an inventor-applicant to an assignee-applicant system.

On August 14, 2012, the U.S. Patent and Trademark Office (PTO) issued rules of practice implementing the inventor’s oath or declaration provisions of Sections 4 and 20 of the Leahy-Smithy America Invents Act (AIA). The final rules package is entitled “Changes to Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act.” These final rules take effect on September 16, 2012, and apply to patent applications filed, or proceedings commenced, on or after that date.

Changes Concerning Who May Apply for a Patent (the Applicant)

The PTO takes the position that under the AIA, an assignee can file and prosecute a patent application as the applicant. The requirement, however, still remains that each inventor must execute an oath or declaration, even if the application has been filed by the assignee, unless an exception applies. The PTO notes that it will continue to use the inventor’s name for application and patent identification purposes.

Changes to Oath or Declaration Practice

Under the new rules, the PTO streamlines a number of oath or declaration requirements (35 U.S.C. § 115). Namely, an oath or declaration is no longer required to (1) identify all the named inventors, if the applicant provides an application data sheet that indicates the legal name, residence, and mailing address of each inventor or (2) identify the inventor’s country of citizenship. The new oath or declaration requirements also include that the inventor “has reviewed or understands” the contents of the application and is aware of the duty of disclosure requirements. This is in contrast to the old requirements, where an inventor had to attest to those requirements.

Additionally, it is now possible to wait until the Notice of Allowance to file an oath or declaration, if the applicant provides an application data sheet before examination indicating the name, residence, and mailing address of each inventor.

Changes Pertaining to Substitute Statements

The PTO also revises the requirements for a substitute statement. Here, the final rules provide that assignees filing an application as the applicant can file a substitute statement no later than the date the issue fee is paid. Further, a substitute statement may be executed in lieu of an oath or declaration by identifying: (1) the circumstances of the non-signing inventor; (2) the person who is executing the substitute statement and the relationship of such person to the non-signing inventor; and (3) the last known address of the non-signing inventor.

Changes Pertaining to Reissue Practice

Additionally, the final rules revise reissue oaths or declarations. Namely, the PTO deletes the requirement for the reissue oath or declaration to include a statement that all errors arose without deceptive intent on the part of the applicant. The oath or declaration now must identify a claim that the application seeks to broaden, if the reissue application seeks to enlarge the scope of the patent claims. Under 35 U.S.C. § 251, the revised rules permit an assignee of the entire interest to sign the inventor’s oath or declaration in a reissue application (even if broadening).

Miscellaneous Changes

Finally, the PTO makes some additional rule changes. For example, the final rules allow for practitioners to change the correspondence address after the patent issues. They also provide for specific procedures in situations where multiple assignees try to control prosecution, and harmonize foreign priority practice with domestic benefit claims by requiring both to be set forth in an application data sheet.