Sunday, September 23, 2012

America Invents Act - Inventor's Oath or Declaration and Filing By Other than Inventor

The USPTO published the final rules to implement the America Invents Act (AIA) sections on inventor's oath or declaration, 35 USC 115, and filing by other than inventor, 35 USC 118. The final rules are effective for all U.S. patent applications filed on or after September 16, 2012.

Here are some key changes under the final rules:

It introduces a new inventor declaration form: PTO/AIA/01.

The inventor's declaration raises the need to remind inventors that they must review and understand the application and have a duty to disclose known prior art to the examiner. The new declaration language is quite brief and merely states the application was made or authorized to be made by me, I am the original inventor or an original joint inventor of a claimed invention in the application, and willful false statements made in the declaration are punishable by fine or imprisonment or both.

The new declaration form may trap some applicants. Although the new declaration form is silent, 37 CFR 1.63(c) requires that an oath or declaration may not be executed unless the inventor reviews and understands the application and is aware of the duty to disclose prior art. The USPTO should consider reintroducing these statements in the new declaration form to ensure applicants are aware of these requirements.

The new declaration only permits the signature of one inventor. Thus, an application with N inventors requires filing N forms.

The new declaration has no line for citizenship.

It will be advisable to file an Application Data Sheet (ADS) (listing the name, residence, and address of each inventor) in many applications.

An applicant can postpone filing the new declaration until allowance as long as an ADS was filed before examination.

The final rules permit assignees to file applications without filing a petition when an inventor is dead, insane, cannot be found or refuses to sign the inventor's declaration. The assignee needs to just file a substitute statement before the issue fee is paid: Form PTO/AIA/02

Copyright © 2012 Robert Moll. All rights reserved.