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Tuesday Nov 05, 2013

Message From Janet Gongola, Patent Reform Coordinator: Various Aspects Of Inventor's Oath/Declaration Provision Explained Including Updates To Certain USPTO Forms, Tips For Using An Application Data Sheet, And Reminders About Correcting Inventorship, etc

Various Aspects Of Inventor's Oath/Declaration Provision Explained Including Updates To Certain USPTO Forms, Tips For Using An Application Data Sheet, And Reminders About Correcting Inventorship, Juristic Entities, And Real Parties In Interest

In January 2013, we provided guidance regarding the use of a substitute statement, addressed the process for correcting inventorship and correcting/updating inventor names, and provided instructions for completing USPTO inventor’s oath or declaration forms. This current post provides information about new versions of some of the USPTO forms and tips for using an application data sheet.  Additionally, we provide an alert about the fee for corrections of inventorship that took effect in March 2013.  Finally, we provide a reminder about the need for juristic entities to be represented as well as the need to update the real party in interest at the time of issue fee payment. 

New Versions of Forms

The Office has updated the Application Data Sheet, Substitute Statement, and Power of Attorney by Applicant forms for use in patent applications filed on or after September 16, 2012.  Each of these three updates will be addressed in turn.  The updated forms are available at www.uspto.gov/forms.

First, the Application Data Sheet (ADS) form, PTO/AIA/14, has been updated to permit an assignee-applicant to be identified as an assignee on the patent application publication, in addition to being identified as the applicant. See the “Assignee Information including Non-Applicant Assignee Information” section of the PTO/AIA/14.  This change to the ADS form was made in response to public feedback.  Some customers want to be identified as both an applicant and an assignee, and this change to the form permits such dual identification.

Second, the Substitute Statement forms, PTO/AIA/02, PTO/AIA/04, and PTO/AIA/07, have been updated to provide for identification of the applicant (e.g., assignee) who is signing the statement on behalf of an inventor.  Additionally, the forms have been updated to contain “authorization to act” language for use by an individual who may not have a title that carries apparent authority but who is authorized to act on behalf of a juristic entity applicant.  A patent practitioner cannot sign a substitute statement on behalf of the applicant merely on the basis of having power of attorney in the application.  In order to sign as the applicant, a patent practitioner must have binding authority (e.g., given by corporate resolution from a Board of Directors).  See MPEP Section 324, V. for more information.

Third, the Power of Attorney by Applicant form, PTO/AIA/82, has been updated to provide a box where a juristic entity applicant may be identified and contains “authorization to act” language for use by an individual who may not have a title that carries apparent authority but who is authorized to act on behalf of a juristic entity applicant.  For patent applications filed on or after September 16, 2012, only the applicant may grant a power of attorney.  Thus, where the inventors are named as the applicant, an assignee would need to become the applicant by filing a request under 37 CFR 1.46(c) and include a corrected ADS per 37 CFR 1.76(c) and a statement under 37 CFR 3.73(c).

Tips for Using an Application Data Sheet

An ADS must identify with markings any changes in information from what was provided in a prior ADS or otherwise of record.  New information must be underlined, and deleted information must be shown using strikethrough or brackets.  The ADS can, however, be limited to showing only the section(s) of the ADS that contains the changed information.  The requirement for identification of the information being changed applies to all application data sheets, regardless of the filing date of the application or proceeding under both versions of 37 CFR 1.76.  Applicants do not have to use USPTO form PTO/AIA/14 to submit a corrected ADS and may instead create a corrected ADS in word processing software.  Please note that, for an application filed before September 16, 2012, applicants must still file a Supplemental ADS with markings and include all of the sections, rather than a corrected ADS, to change the information.  See MPEP 601.05 for more information.

New Additional Fee for Correction or Change of Inventorship

Where a request to correct or change the inventorship is filed under 37 CFR 1.48(a) after an Office action on the merits has been given or mailed, there is a fee that is due as of March 19, 2013, in addition to the processing fee, unless the request is accompanied by a statement that the request is due solely to the cancellation of claims in the application.  See 37 CFR 1.48(c).  The additional fee is set forth in 37 CFR 1.17(d).  As a reminder, the changes to the correction of inventorship rule, 37 CFR 1.48, were effective on September 16, 2012, and apply to any request to correct inventorship filed on or after September 16, 2012, regardless of the application filing date.  Where, however, a new inventor declaration is required due to an added inventor, the filing date of the application governs which version of 37 CFR 1.63 the declaration must comply with (e.g., for an application filed before September 16, 2012, the declaration would need to comply with pre-AIA 37 CFR 1.63, and USPTO Form PTO/SB/01 could be used).

Reminder for Juristic Entities

Juristic entities (this includes corporations and other non-human entities created by law and given certain legal rights) who seek to prosecute an application must do so via a registered patent practitioner, even if the juristic entity is the applicant.  See 37 CFR 1.31.  All papers submitted on behalf of a juristic entity must be signed by a patent practitioner unless otherwise specified, in accordance with 37 CFR 1.33(b)(3).  Only a limited number of documents may be signed by a juristic entity such as a terminal disclaimer, statement under 37 CFR 3.73(c), power of attorney, or substitute statement.  This change in practice was effective September 16, 2012, and applies to any paper filed on behalf of a juristic entity on or after September 16, 2012, regardless of the filing date of the application or proceeding.

Reminder to Update the Real Party in Interest at Time of Payment of the Issue Fee

For applicants other than the inventor(s), e.g., assignee-applicants, the Office is statutorily required to issue any patent to the real party in interest.  Accordingly, 37 CFR 1.46(e) requires that the Office be notified if there has been any change in real party in interest, e.g., the assignee-applicant is no longer the real party in interest.  The notification requirement applies no matter whether the non-inventor applicant was the applicant on initial filing or later became the applicant under 37 CFR 1.46(c).

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