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.
Showing posts with label 35 USC 115. Show all posts
Showing posts with label 35 USC 115. Show all posts
Sunday, September 23, 2012
Saturday, June 23, 2012
A Guide to the Legislative History of the America Invents Act (AIA)
If you are interested in the legislative history of the America Invents Act (AIA), I recommend reading Joe Matal's A Guide to the Legislative History of the America Invents Act: Part I of II and Part II of II. Here are links to download Part I and Part II of the Guide. This article should be helpful to applicants for US patents and parties seeking to challenge issued US patents in the PTO.
As a brief summary, Part I describes the legislative history and origins of the first-to-file system and the modifications to 35 USC 102 (novelty and statutory bars), 35 USC 103 (obviousness), 35 USC 115 (inventor's declaration), 35 USC 122 (confidential status and publication of applications), and 35 USC 135 (derivation).
Part II describes the legislative history and origins of the new laws that apply to US patents. Thus, it describes the post-grant procedures, inter partes proceedings, supplemental examination, business method patent review, the new defense of prior commercial use, partial repeal of the best mode, virtual and false marking, advice of counsel, court jurisdiction, PTO funding, and rules for patent term extensions.
Although the article should prove useful, legislative history can be misleading. Indeed, the Supreme Court has warned against relying on legislative statements not anchored in the text of the statute. First, the statements may not pertain to a law that passed. It is also difficult to identify who drafted the law. Given we don't know who drafts the laws, how do we assign weight to the statements of various members of Congress? Also the legislative history of the AIA is lengthy as it stretches from 2005 to 2011. Nonetheless, organizing the legislative history of the AIA is a major undertaking so the article is a welcome start.
Copyright © 2012 Robert Moll. All rights reserved.
As a brief summary, Part I describes the legislative history and origins of the first-to-file system and the modifications to 35 USC 102 (novelty and statutory bars), 35 USC 103 (obviousness), 35 USC 115 (inventor's declaration), 35 USC 122 (confidential status and publication of applications), and 35 USC 135 (derivation).
Part II describes the legislative history and origins of the new laws that apply to US patents. Thus, it describes the post-grant procedures, inter partes proceedings, supplemental examination, business method patent review, the new defense of prior commercial use, partial repeal of the best mode, virtual and false marking, advice of counsel, court jurisdiction, PTO funding, and rules for patent term extensions.
Although the article should prove useful, legislative history can be misleading. Indeed, the Supreme Court has warned against relying on legislative statements not anchored in the text of the statute. First, the statements may not pertain to a law that passed. It is also difficult to identify who drafted the law. Given we don't know who drafts the laws, how do we assign weight to the statements of various members of Congress? Also the legislative history of the AIA is lengthy as it stretches from 2005 to 2011. Nonetheless, organizing the legislative history of the AIA is a major undertaking so the article is a welcome start.
Copyright © 2012 Robert Moll. All rights reserved.
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