On August 14, 2012, the USPTO promulgated a final rules package entitled “Changes to Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act.” Although these rule changes will make life easier for applicants, assignees, and attorneys over the long term, all parties need to be mindful of the September 16, 2012 transition date, which is a hard breakpoint between the present form of inventor declarations (“pre-AIA form”) and a new form of inventor declaration (“post-AIA form”). This transition will particularly affect applicants that provide signed declarations to US counsel for filing with new US applications and applicants filing continuation and divisional applications. Applicants may wish to use declaration forms that satisfy both pre-AIA and post-AIA requirements and/or accelerate filings (particularly continuations and divisionals) prior to September 16, 2012, so that existing pre-AIA declarations will be accepted.

Statutory Amendments Under the America Invents Act

The Leahy-Smith America Invents Act amended US patent law to place less emphasis on the inventor as the applicant and allow an assignee to file a patent application in certain situations. In order to implement this shift, 35 USC § 115 was rewritten to set forth new requirements for an inventor’s oath or declaration and allow submission of a substitute statement in lieu of a declaration in certain circumstances. This statutory amendment becomes effective on September 16, 2012 and will apply to declarations for all utility applications filed on or after September 16, 2012. (The relevant filing date for national phase applications under 35 USC § 371 is the international filing date.)

Amended Section 115 requires each inventor to state that:

  1. the application was made or authorized to be made by the affiant or declarant; and
  2. such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.

Although the second statement was included nearly verbatim in most declarations currently used (including the Form PTO/SB/106 declaration provided by the USPTO), the first statement is not explicitly included in declarations such as the Form PTO/SB/106.

35 USC § 118 was also amended to permit filing of patent applications by persons having an ownership interest in the invention under much broader circumstances than permitted under pre-AIA rules. Section 118 is implemented in part by 37 CFR §1.46(a), which states in pertinent part:

A person to whom the inventor has assigned or is under obligation to assign the invention may make an application for patent. A person who otherwise shows a sufficient proprietary interest in the matter may make an application for patent on behalf of and as an agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.

Rule 46 also provides other requirements when such an application is made in such circumstances, including the furnishing of an appropriate application data sheet, recordation of documentary evidence of ownership interest, e.g., an assignment or an employment agreement showing an obligation to assign. Other requirements are set forth for persons who can otherwise show sufficient proprietary interest in the matter. Such applicants must submit a substitute statement, in lieu of an inventor’s oath or declaration, under new Rule 64, which specifies a number of requirements for such substitute statements.

The USPTO’s Final Rules Package

The August 14, 2012 amendments to Rule 63 substantially relax the requirements for inventor declarations. For example:

  • The number of required statements included in the new declaration is significantly reduced. Thus, for example, the new rules no longer require the inventor(s) to acknowledge review of the application or the duty to disclose under Rule 56. (The new rules do, however, require that the inventor review the application and understand the duty to disclose before signing the declaration. The new rules do not preclude such statements from post-AIA declarations.)
  • Disclosure of the inventor's citizenship is no longer required in the declaration.

What is even more noteworthy is the USPTO’s response to comments concerning the use of declarations from prior applications in later-filed continuation and divisional applications. In response to public comments suggesting that the USPTO clarify its proposed rules to state that declarations from prior applications will be acceptable if submitted in continuation or divisional applications filed after September 16, 2012, the USPTO appears to be taking a strict interpretation of the amended statute and accepting only those declarations that include both statements specified under Section 115.

Recommendations

In view of the approaching changeover between the current declaration format and the new declaration format required by the AIA, applicants and their attorneys should consider the following actions:

  • Adding the statements required under amended Section 115 to existing declarations if there is potential that the application (or a continuation or divisional thereof) may not be filed until on or after September 16, 2012. (Although the USPTO may be modifying its pre-AIA declaration forms available online to include the post-AIA language, it is unclear when such changes will be published. Note also that, if any modifications are made to a USPTO form, the modified form cannot be indicated to be a USPTO form, and any USPTO form number must be deleted from the form.)
  • Determining whether the anticipated filing schedule will allow the inventors to execute the appropriate version of the declaration.
  • If there is doubt as to when the application will be filed, asking the inventors to execute both old and new versions of the declaration. 
  • Accelerating the filing of anticipated continuation and divisional applications to September 15, 2012 or earlier so that a new declaration will not be required. Such acceleration may be particularly advantageous for older applications or applications listing inventors that may be difficult to locate.

Conclusions

There are a number of other detailed requirements for declarations and statements in lieu of declarations that need not be detailed here. Edwards Wildman attorneys continue to monitor the USPTO implementation of these rules and others related to the America Invents Act. In particular, we are updating our declaration forms and monitoring the availability of new USPTO declaration forms in various languages.