Final Rules Released for Oath or Declaration Provisions - What You Need To Know

On August 14, 2012, the United States Patent Office (USPTO) issued final rules that will implement the America Invents Act (AIA) provisions relating to the inventor’s oath or declaration (discussed below as “declaration” for simplicity). These final rules drastically change many aspects of the prior rules relating to the content of declarations and the timing for filing declarations. Thus, for applications having a filing date on or after September 16, 2012, patent applicants can expect to see very different declarations provided for signature.

How Has the Required Content of the Declaration Changed?

Although an inventor’s declaration still must be executed (except in limited circumstances described below), the new rules reduce the required statements and result in a streamlined declaration. Many pieces of information previously contained in the declaration will be moved to an application data sheet (ADS), which is prepared by the patent attorney just prior to filing the patent application. For example, the ADS will be the Patent Office’s sole source of information for the listing of the inventors and any foreign and domestic priority claims.

The declaration must contain a statement that the application was made or was authorized to be made, by the person signing the declaration and that the inventor is believed to be the original inventor or an original joint inventor of an invention claimed in the patent application. For this reason, the person signing the declaration must still have reviewed the application and be aware of the duty of disclosure.

The citizenship of the inventors and the names of the inventors no longer need to be listed in the declaration text (if provided in an ADS). The inventor no longer needs to state in the declaration that the inventor is believed to be the “first” inventor, in light of the AIA changing the U.S. to a first to file system. Also removed from the requirements for the declaration are the statement of foreign priority claims and any statements relating to the inventor’s understanding of the application, the duty of disclosure, the potential impact of willful false statements on the application or issuing patent’s validity, and the belief by the inventor of the truthfulness of his or her statements made in the declaration.

Some patent owners may decide to combine the simplified statements required for declarations into an assignment document and require only one signature for each inventor, which is allowed under the new rules. The combined assignment and declaration can be recorded as a single document in the same manner as a traditional assignment.

Do I need a Newly Executed Declaration in a Continuing Application?

Traditionally, the original declaration from a parent application can be filed in a continuation, divisional, or continuation-in-part application that includes the aforementioned statements required under the final rules, provided the inventors are the same. However, a previous declaration from a parent application filed before the final rules go into effect (i.e., before September 16, 2012) will likely not include some of the required language. Thus, a continuation, divisional or continuation-in-part application filed after September 16, 2012 and claiming priority to an application filed before September 16, 2012 will likely require a newly executed declaration that contains the newly required language.

When is a Declaration Not Needed?

The final rules allow for a substitute statement to be filed in lieu of a declaration when an inventor is deceased, incapacitated, or refuses to execute a declaration, or cannot be reached after diligent effort. While petitions or other corresponding procedures existed in the previous rules, the final rules no longer require proof of facts to support the filing of a substitute statement. Instead, only an explanation of the circumstances, the name of the inventor at issue, and the person signing the substitute statement are required.

When Does a Declaration Need to Be Submitted?

Under the new procedures, a declaration no longer needs to be submitted prior to examination of a patent application, provided that an application data sheet is filed before examination that lists the name, residence, and mailing address of each inventor. A declaration need not be submitted until the patent application is in an allowable form, and prior to a deadline provided within a Notice of Allowability. If the application does not include a declaration in the initial filing, a $130 surcharge will be incurred, provided the initial filing includes the aforementioned application data sheet. However, a delay in filing an executed declaration in a U.S. national stage application after national stage entry could reduce the accrual of USPTO delay-based patent term adjustment.

How Have the Revised Declaration Rules Affected a Priority Claim?

Under the new procedures, a declaration containing a claim to foreign priority is no longer effective in establishing the foreign priority claim. Also, a domestic priority claim that is not in the application data sheet, but that is listed only in the written description of a patent application, will no longer be effective. Instead, a claim for either foreign or domestic priority must be provided in an application data sheet.

What to Do Now?

With the implementation of the new rules on September 16, 2012, patent applicants will notice a change in the documents they are requested to sign in connection with a patent application. The declarations should be streamlined and can be combined with the assignment to further simplify the signing by inventors. Nevertheless, it is important that the inventors review the patent application prior to signing the simplified documents and it is important that each inventor be reminded of the duty to submit to the Patent Office information relevant to patentability of the invention.

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