USPTO Proposes to Amend Administrative Requirements for Inventor Oaths in Patent Applications

On January 6, 2012, the U.S. Patent and Trademark Office published a proposed rule that will change its rules of practice in patent cases to implement the inventor oath and declaration provisions of the America Invents Act.  The proposed rule, which is scheduled to be made final by September 16, 2012, will implement the following changes:

  • The assignee will be permitted to sign the inventor oath if the inventor dies or becomes incapacitated.
  • If an inventor refuses to sign an oath or cannot be found after diligent effort, the assignee may sign the oath.  (A petition and proof of relevant facts will still be required.)
  • When carrying over a power of attorney from a parent case to a continuing case, the applicant will be required to submit a copy of the power of attorney in the continuing case.
  • The rule will permit applicants to use a combined inventor declaration / assignment document.
  • The rule includes a recommendation against using a combined declaration / power of attorney document because, among other things, of the potential loss of power of attorney if inventorship changes.
  • When paying by credit card, patent applicants will be required to submit an original handwritten signature, rather than an electronic signature.
  • The rule includes new mailing details for patent term extension requests.  (Patent term extension requests still must be submitted in writing, rather than by electronic filing.)
  • Certain details will be required to be listed in the application’s Application Data Sheet, including inventor mailing information (which can be a residence address or a work address, depending on where the inventor receives mail) and foreign priority details.

The proposed rule also includes several changes relating to reissue filings, supplemental declarations, and other administrative procedures.  The USPTO will accept public comments on the proposed rule through March 5, 2012.

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