Assignment Post Aia Declaration

What’s the situation?

After the America Invents Act (AIA) changed the US patent system from First-To-Invent (FTI) to First-Inventor-To-File (FITF), the USPTO updated the Inventor Oath or Declaration rules to reflect this monumental change. In the pre-AIA world, by signing a declaration, (PTO/SB/01), an inventor declared that “I believe the inventor(s) named below to be the original and first inventor(s) of the subject matter which is claimed and for which a patent is sought” (emphasis added). Now in the post-AIA world, it is no longer required that an inventor be the first inventor of the claimed subject matter and, as such, an AIA declaration (PTO/AIA/01) merely requires an inventor to state “I believe that I am the original inventor or an original joint inventor of a claimed invention in the application” (emphasis added). In other words, an inventor who is filing an application for a utility or design patent application with the USPTO on or after September 16, 2012, need only declare that he or she is an inventor, not necessarily the first inventor of the claimed subject matter.

 Can a declaration from a parent application be re-used in a child case?

It depends. Although a declaration from each inventor is required in every application, 37 CFR § 1.63(d) states that a newly-executed declaration is not required in a continuing application if a compliant declaration was filed in the parent application. In practical terms, this means that a copy of a declaration by an inventor that was filed in a parent application can be filed in a child application, but only if both the parent and child application are on the same side of the September 16, 2012 dividing line. If the child and parent applications straddle the September 16, 2012 date, i.e., if the parent application was filed before September 16, 2012 and the child application was filed on or after September 16, 2012, then an AIA-compliant declaration must be newly-executed by each inventor and filed in the child case. This is illustrated in the infographic below.  More information on using copies of declarations from prior applications can be found in the USPTO AIA Inventor’s Oath or Declaration Quick Reference Guide.

What if an inventor can’t or won’t sign a new declaration?

The AIA does not affect the rules for when a Substitute Statement in Lieu of an Oath or Declaration (PTO/AIA/02) may be filed, i.e., if (1) the inventor is deceased or legally incapacitated, (2) the inventor refuses to sign a declaration, or (3) the inventor cannot be found after diligent effort. A Substitute Statement, however, may be filed in an application filed on or after September 16, 2012, only if the applicant in the case is the assignee, a party to whom the inventor is under an obligation to assign, or a party who otherwise shows a sufficient proprietary interest in the matter. More information on when it is appropriate to use a Substitute Statement can be found in the USPTO AIA Inventor’s Oath or Declaration Quick Reference Guide.

When will the USPTO recognize the assignee as the applicant?

For the USPTO to recognize such a party as the applicant in an application, the Applicant Information section of the Application Data Sheet (ADS) (PTO/AIA/14) must list the assignee (or other party).  If the Applicant Information section is blank, the USPTO will recognize the inventor or joint inventors as the applicant.

The following is a guest post from Carl Oppedahl. Oppedahl is the founder of his self-named, Colorado-based patent law firm. www.oppedahl.com

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On August 14, 2012, USPTO published its new Rules relating to the Oath and Declaration of the inventor. These Rules take effect on Sunday, September 16, 2012 and it is not much of an exaggeration to say that they change everything about the Oath and Declaration of the inventor. USPTO has also posted several new forms on its web site, forms which will be usable starting on September 16, 2012. In this guest post I will talk about two particular forms and the ways that they will make a big difference in your daily patent practice.

We are all familiar with Form PTO/SB/01 and Form PTO/SB/01A, which I call the "long form" declaration and the "short form" declaration. These two forms are to be used for any patent application filed before September 16, 2012. They contain the "magic words" that are required for a declaration that is used in an application filed before September 16, 2012. I call these "old" declarations. When I say an "old" application I mean an application filed before September 16, 2012.

The long form declaration contains all of the bibliographic data, for example the foreign priority information, the mailing address of the inventors, and lots of other things. The short form declaration contains the bare minimum of information and "magic words" permitted by the Statute and the Rules for an "old" application.

This leads us to one of the very big changes in the new Rules. For a new patent application filed on or after September 16, 2012 (which I call a "new" application), the "magic words" and the information content for a declaration are different than before. The new form is PTO/AIA/01. I call this the "new" declaration.

Here is one of the important things to know. If your application is a "new" application, then the declaration has to be a "new" declaration. If your application is an "old" application, then the declaration has to be an "old" declaration.

We all know that under 35 USC § 363, a PCT application designating the United States is a US patent application. This means that if your application is a US national phase of a PCT application, then the way you know whether it is "new" or "old" is by looking at the international filing date.

If you are getting ready to send a blank declaration to an inventor for signature, you need to send the correct one ("old" or "new") depending on the filing date of the application. If you already have a signed declaration in hand and you are thinking about sending it to the USPTO, you need to look at it to see if it is "old" or "new" If it is the wrong kind, then you need to prepare one of the correct kind and get it signed.

Go to the web site of the USPTO and print out the "old" and "new" declarations. What you will see is summarized in this table:

Filing date of application

Before September 16, 2012

On or after September 16, 2012

How many inventor documents are filed?

One declaration with N signatures lines, one signature line for each inventor

One form for each inventor, each with one signature line and one signature

Does the declaration take a position on who the other inventors are?

Yes

No

How many "magic words"?

203

90

Form

PTO/SB/01A

PTO/AIA/01

Citizenship stated in form?

Yes

No

When an inventor cannot be found or refuses to sign?

Rule 47 practice

Form PTO/AIA/02 ("Substitute Statement")

One of the first things you will see is that the new declaration has no place to list any inventors other than the particular inventor who is signing the declaration. Instead, it turns out that the way the USPTO learns who the inventors are in a particular case is by means of an Application Data Sheet.

For an old application, there will be a single declaration form, with places for as many signatures as there are inventors. Each inventor is taking a position as to who the other inventors are. In contrast, for a new application, there are as many declaration forms (Form PTO/AIA/01) as there are inventors, each having only a single signature line for that inventor.

Another thing you will see is that the "magic words" count is far smaller for a new declaration compared with an old one. The magic word count is 90 compared with 203.

The new declaration does not aver that the signer has reviewed and understood the application including the claims. And it does not acknowledge the duty of disclosure. But the new Rules state that anyone signing a declaration must have reviewed and understood the application including the claims. And the new Rules state that the signer must be aware of the duty of disclosure. So you will need to do whatever it takes to ensure that these requirements are satisfied for anyone signing a new declaration.

What happens if an inventor cannot be found or refuses to sign the declaration?

For an old application, the answer is of course the well-known Rule 47 procedure. You assemble one or more statements signed by various persons having knowledge of the pertinent facts, you prepare a Petition, you pay a fee, and then you wait to find out what the USPTO thinks about your papers. Maybe the USPTO grants the Petition, maybe the USPTO asks for more statements or more detailed statements. I've heard stories from practitioners who had to go around as many as three times with the USPTO before the USPTO would grant the Petition.

For a new application, it's all different. You simply fill out Form PTO/AIA/02 and send it in. No fee, no statements, no petition. This form all by itself replaces the inventor's declaration. So for example if you have seven inventors, and two of them refuse to sign and another cannot be found, then you will hand in three Forms PTO/AIA/02, and four signed Forms PTO/AIA/01, and an Application Data Sheet, and Bob's your uncle.

So for some categories of inventor signature problem, the legacy Rule 47 procedure is a thing of the past. Anyone who has suffered through a difficult Rule 47 Petition in the past will be delighted at this change.

Which gets us to the Application Data Sheet (ADS). The ADS with which many of us are familiar is Form PTO/SB/14 ( /media/docs/2012/08/sb0014.pdf ). It is a Best Practice to use this form (which is computer-readable) because it can auto-load its bibliographic data directly into EFS-Web and from there into Palm. This eliminates several possible sources of error when compared with an approach in which USPTO personnel hand-key such information into Palm.

Under the new Rules, the use of a ADS is mandatory except under a small handful of rare fact situations. So you might as well get used to preparing and filing ADSs.

Within the next week or two, USPTO will post the "new" application data sheet for use with "new" patent applications. When this ADS becomes available, it will likewise be a Best Practice to use it, and to e-file it so that it too may auto-load into Palm. The key is to include the computer-readable ADS in the first e-filing submission for a particular patent application. Only then will it auto-load into Palm.

After you have carried out the e-filing submission that contains the ADS (the first e-filing submission for a particular patent application), be sure to open the application in Private PAIR and click on the Publication Review page. You can proofread this page and you can check all of the bibliographic data for accuracy. In the event of some error or omission, you can get started right away on getting it fixed even before the Filing Receipt gets mailed.

Well, there we are. I've told you about one-twentieth of the things that are completely different as a result of USPTO's new rules relating to the oath and declaration. For the rest, you can read the new Rules (/media/docs/2012/08/fr_inventor_oath.pdf ).

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Carl Oppedahl will present a webinar (brochure) about the new Rules on Oath and Declaration on August 30, 2012. Carl has made this posting available as an Epub file which you could load into a Nook or any other Epub reader.

© OPLF 2012

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