Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act, 982-1003 [2011-33815]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 77, Number 4 (Friday, January 6, 2012)]
[Proposed Rules]
[Pages 982-1003]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2011-33815]



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Vol. 77

Friday,

No. 4

January 6, 2012

Part V





Department of Commerce





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United States Patent and Trademark Office





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37 CFR Parts 1 and 3





Changes To Implement the Inventor's Oath or Declaration Provisions of 
the Leahy-Smith America Invents Act; Proposed Rule

Federal Register / Vol. 77 , No. 4 / Friday, January 6, 2012 / 
Proposed Rules

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1 and 3

[Docket No. PTO-P-2011-0074]
RIN 0651-AC68


Changes To Implement the Inventor's Oath or Declaration 
Provisions of the Leahy-Smith America Invents Act

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office) 
proposes changes to the existing rules of practice to implement the 
inventor's oath or declaration provisions of the Leahy-Smith America 
Invents Act. The Office proposes to revise and clarify the rules of 
practice relating to the inventor's oath or declaration, including 
reissue oaths or declarations, assignments containing oath or 
declaration statements from inventors, and oaths or declarations signed 
by parties other than the inventors. In order to better facilitate 
processing of patent applications, the Office further proposes to 
revise and clarify the rules of practice for power of attorney and 
prosecution of an application by an assignee.

DATES: Written comments must be received on or before March 6, 2012.

ADDRESSES: Comments should be sent be electronic mail message over the 
Internet addressed to: oath_declaration@uspto.gov. Comments may also 
be submitted by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, 
marked to the attention of Hiram H. Bernstein, Senior Legal Advisor, 
Office of Patent Legal Administration, Office of the Associate 
Commissioner for Patent Examination Policy.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (https://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message over the 
Internet because sharing comments with the public is more easily 
accomplished. Electronic comments are preferred to be submitted in 
plain text, but also may be submitted in ADOBE[supreg] portable 
document format or MICROSOFT WORD[supreg] format. Comments not 
submitted electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] portable 
document format.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, currently located in Madison East, 
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also 
will be available for viewing via the Office's Internet Web site 
(https://www.uspto.gov). Because comments will be made available for 
public inspection, information that the submitter does not desire to 
make public, such as an address or phone number, should not be included 
in the comments.

FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((571) 272-7707), 
Senior Legal Advisor, or Eugenia Jones ((571) 272-7727), Senior Legal 
Advisor, or Terry J. Maciejewski ((571) 272-7730), Technical Writer-
Editor, Office of Patent Legal Administration, Office of the Associate 
Commissioner for Patent Examination Policy.

SUPPLEMENTARY INFORMATION: The Leahy-Smith America Invents Act was 
enacted into law on September 16, 2011. See Public Law 112-29, 125 
Stat. 284 (2011). Section 4 of the Leahy-Smith America Invents Act 
amends 35 U.S.C. 115 and 118 to change the practice regarding an 
inventor's oath or declaration. Section 20 of the Leahy-Smith America 
Invents Act amends 35 U.S.C. 116, 184, 251, and 256 (and other 
statutes) to remove the ``without any deceptive intention'' provision. 
This notice proposes changes to the rules of practice to implement the 
provisions of Section 4 of the Leahy-Smith America Invents Act and the 
changes in Section 20 of the Leahy-Smith America Invents Act that 
relate to the removal of the ``without any deceptive intention'' 
language from 35 U.S.C. 116, 184, 251, and 256.
    More specifically, Section 4(a) of the Leahy-Smith America Invents 
Act amends 35 U.S.C. 115 to change the requirements for an inventor's 
oath or declaration.
    35 U.S.C. 115(a) provides that an application filed under 35 U.S.C. 
111(a) or that commences the national stage under 35 U.S.C. 371 must 
include, or be amended to include, the name of the inventor for any 
invention claimed in the application. 35 U.S.C. 115(a) also provides 
that, except as otherwise provided in 35 U.S.C. 115, each individual 
who is the inventor or a joint inventor of a claimed invention in an 
application must execute an oath or declaration in connection with the 
application.
    35 U.S.C. 115(b) provides that an oath or declaration under 35 
U.S.C. 115(a) must contain statements that the application was made or 
was authorized to be made by the affiant or declarant, and the 
individual believes himself or herself to be the original inventor or 
an original joint inventor of a claimed invention in the application. 
There is no longer a requirement in the statute that the inventor must 
state his country of citizenship and that the inventor believes himself 
or herself to be the ``first'' inventor of the subject matter (process, 
machine, manufacture, or composition of matter) sought to be patented.
    35 U.S.C. 115(c) provides that the Director may specify additional 
information relating to the inventor and to the invention that is 
required to be included in an oath or declaration under 35 U.S.C. 
115(a).
    35 U.S.C. 115(d)(1) provides that, in lieu of execution of an oath 
or declaration by an inventor under 35 U.S.C. 115(a), the applicant for 
patent may provide a substitute statement under the circumstances 
described in 35 U.S.C. 115(d)(2) and such additional circumstances as 
the Director specifies by regulation. The circumstances set forth in 35 
U.S.C. 115(d)(2) in which the applicant may provide a substitute 
statement are limited to the situations where an individual is unable 
to file the oath or declaration under 35 U.S.C. 115(a) because the 
individual is deceased, under legal incapacity, or cannot be found or 
reached after diligent effort, or an individual is under an obligation 
to assign the invention but has refused to make the oath or declaration 
required under 35 U.S.C. 115(a). Therefore, while an assignee, an 
obligated assignee, or a person who otherwise shows sufficient 
proprietary interest in the matter may make an application for patent 
as provided for in 35 U.S.C. 118, an oath or declaration (or an 
assignment containing the required statements) by each of the inventors 
is still required, except in the circumstances set forth in 35 U.S.C. 
115(d)(2) and in any additional circumstances specified by the Director 
in the regulations. The contents of a substitute statement are set 
forth in 35 U.S.C. 115(d)(3). Specifically, the substitute statement 
must identify the individual to whom the statement applies, set forth 
the circumstances for the permitted basis for filing the substitute 
statement in lieu of the oath or declaration under 35 U.S.C. 115(a), 
and contain any additional information,

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including any showing, required by the Director.
    35 U.S.C. 115(e) provides for making the statements required under 
35 U.S.C. 115(b) and (c) in an assignment of record and specifically 
permits an individual who is under an obligation of assignment of an 
application to include the required statements in the assignment 
executed by the individual, in lieu of filing the statements 
separately.
    35 U.S.C. 115(f) provides that a notice of allowance under 35 
U.S.C. 151 may be provided to an applicant only if the applicant has: 
(1) Filed each required oath or declaration under 35 U.S.C. 115(a); (2) 
filed a substitute statement under 35 U.S.C. 115(d); or (3) recorded an 
assignment meeting the requirements of 35 U.S.C. 115(e). 35 U.S.C. 
111(a)(2), however, continues to require that an application filed 
under 35 U.S.C. 111(a) include an oath or declaration as prescribed by 
35 U.S.C. 115, and 35 U.S.C. 111(a)(3) continues to permit the oath or 
declaration to be submitted after the filing date of the application, 
but within such period and under the conditions prescribed by the 
Director, including payment of a surcharge. Likewise, 35 U.S.C. 371(c) 
continues to require an oath or declaration complying with the 
requirements of 35 U.S.C. 115 for an international application to enter 
the national stage, and 35 U.S.C. 371(d) continues to require the oath 
or declaration to be submitted within the period prescribed by the 
Director, and with the payment of a surcharge if required by the 
Director and not submitted by the date of the commencement of the 
national stage. Thus, the change to 35 U.S.C. 115 does not alter the 
statutory authorization in 35 U.S.C. 111(a) and 371 for requiring the 
oath or declaration to be submitted prior to examination of the 
application, and requiring a surcharge for the submission of an oath or 
declaration after the filing date of the application under 35 U.S.C. 
111(a) or by the date of the commencement of the national stage in an 
international application entering the national stage under 35 U.S.C. 
371.
    35 U.S.C. 115(g)(1) provides that the requirements under 35 U.S.C. 
115 shall not apply to an individual named as the inventor or a joint 
inventor in an application that claims benefit under 35 U.S.C. 120, 
121, or 365(c) of an earlier-filed application, if: (1) An oath or 
declaration meeting the requirements of 35 U.S.C. 115(a) was executed 
by the individual and was filed in connection with the earlier-filed 
application; (2) a substitute statement meeting the requirements of 35 
U.S.C. 115(d) was filed in connection with the earlier-filed 
application with respect to the individual; or (3) an assignment 
meeting the requirements of 35 U.S.C. 115(e) was executed with respect 
to the earlier-filed application by the individual and was recorded in 
connection with the earlier-filed application. 35 U.S.C. 115(g)(2) 
provides that the Director may still require a copy of the executed 
oath or declaration, the substitute statement, or the assignment filed 
in connection with the earlier-filed application to be filed in the 
later-filed application.
    35 U.S.C. 115(h)(1) provides that any person making a statement 
under 35 U.S.C. 115 may withdraw, replace, or otherwise correct the 
statement at any time. 35 U.S.C. 115(h)(1) also provides that if a 
change is made in the naming of an inventor requiring the filing of one 
or more additional statements, the Director shall establish regulations 
under which such additional statements may be filed. 35 U.S.C. 
115(h)(2) provides that if an individual has executed an oath or 
declaration meeting the requirements of 35 U.S.C. 115(a) or an 
assignment meeting the requirements of 35 U.S.C. 115(e), then the 
Director cannot require that individual to subsequently make any 
additional oath, declaration, or other equivalent statement in 
connection with the application or any patent issuing thereon. 35 
U.S.C. 115(h)(3) provides that a patent shall not be invalid or 
unenforceable based upon the failure to comply with a requirement under 
this section if the failure is remedied as provided under 35 U.S.C. 
115(h)(1).
    35 U.S.C. 115(i) provides that any declaration or statement filed 
pursuant to 35 U.S.C. 115 must contain an acknowledgement that any 
willful false statement made in the declaration or statement is 
punishable under 18 U.S.C. 1001 by fine or imprisonment of not more 
than 5 years, or both. This is similar to the provision in current 37 
CFR 1.68.
    Section 4(a)(2) of the Leahy-Smith America Invents Act amends 35 
U.S.C. 121 to eliminate the sentence that provided for the Director to 
dispense with the signing and execution of an oath or declaration or 
equivalent statement by the inventor in a divisional application when 
the divisional application is directed solely to subject matter 
described and claimed in the original application as filed. This 
amendment to 35 U.S.C. 121 is consistent with 35 U.S.C. 115(g)(1) 
because the inventor named in a divisional application would not need 
to execute an oath or declaration or equivalent statement for the 
divisional application regardless of whether the divisional application 
is directed solely to subject matter described and claimed in the 
original application.
    Section 4(a)(3) of the Leahy-Smith America Invents Act amends 35 
U.S.C. 111(a) to insert ``or declaration'' after ``and oath.''
    Section 4(b)(1) of the Leahy-Smith America Invents Act amends 35 
U.S.C. 118 to change the practice regarding the filing of an 
application by a person other than the inventor. First, 35 U.S.C. 118 
is amended to provide that a person to whom the inventor has assigned 
or is under an obligation to assign the invention may make an 
application for patent. Second, 35 U.S.C. 118 is amended to provide 
that a person who otherwise shows sufficient proprietary interest in 
the matter may make an application for patent on behalf of, and as 
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. 
Finally, 35 U.S.C. 118 is amended to provide that if a patent is 
granted on an application filed under 35 U.S.C. 118, the patent shall 
be granted to the real party in interest. Under amended 35 U.S.C. 118, 
the Director may continue to provide whatever notice to the inventor 
that the Director considers to be sufficient.
    The changes to 35 U.S.C. 115 and 118 do not mean that a person to 
whom the inventor has assigned or is under an obligation to assign the 
invention may make an application for patent in all circumstances. They 
do, however, recognize that an assignee or a person to whom the 
inventor is obligated to assign can execute the oath or declaration. In 
those circumstances set forth in 35 U.S.C. 115(d)(2), an assignee or 
person to whom the inventor is under an obligation to assign, or a 
legal representative of the dead or legally incapacitated inventor, is 
the applicant as is currently set forth in 37 CFR 1.41(b).
    Section 4(b)(2) of the Leahy-Smith America Invents Act includes a 
conforming amendment to 35 U.S.C. 251 to provide for the filing of a 
reissue application by an assignee of the entire interest if the 
application for the original patent was filed by the assignee of the 
entire interest.
    Section 4(c) of the Leahy-Smith America Invents Act amends 35 
U.S.C. 112 to change, inter alia, the undesignated paragraphs to 
subsections. Section 4(d) makes conforming amendments to 35 U.S.C. 
111(b) to make reference to the subsections of 35 U.S.C. 112.
    Section 4(e) of the Leahy-Smith America Invents Act provides that 
the amendments made by Section 4 shall take effect on September 16, 
2012, and

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shall apply to any patent application filed on or after September 16, 
2012.
    Section 20 of the Leahy-Smith America Invents Act amends 35 U.S.C. 
116, 184, 251, and 256 to eliminate the ``without any deceptive 
intention'' clauses from each portion of the statute. This change 
should not be taken as an endorsement for applicants and inventors to 
act with ``deceptive intention'' in proceedings before the Office. As 
discussed previously, 35 U.S.C. 115(i) requires that any declaration or 
statement filed pursuant to 35 U.S.C. 115 must contain an 
acknowledgement that any willful false statement made in the 
declaration or statement is punishable under 18 U.S.C. 1001 by fine or 
imprisonment of not more than 5 years, or both.
    Section 20(l) of the Leahy-Smith America Invents Act provides that 
the amendments made by Section 20 shall take effect on September 16, 
2012, and shall apply to proceedings commenced on or after September 
16, 2012.
    General discussion regarding implementation: 35 U.S.C. 115 as 
amended permits the required inventor statements to be made in an oath 
or declaration under 35 U.S.C. 115(a), a substitute statement under 35 
U.S.C. 115(d), or an assignment under 35 U.S.C. 115(e). Since 35 U.S.C. 
115 no longer contains a requirement that the inventor identify his 
country of citizenship, the Office will no longer require this 
information in the oath or declaration. The other requirements for 
oaths or declarations currently provided in 37 CFR 1.63 would be 
retained.
    In view of 35 U.S.C. 115(d), the Office is proposing to permit an 
assignee, a party to whom the inventor is legally obligated to assign 
the invention, and a party who otherwise has a sufficient proprietary 
interest to provide a substitute statement with respect to an inventor 
who is deceased, is legally incapacitated, cannot be found or reached 
after diligent effort, or refuses to sign the oath or declaration, even 
when there are other inventors who are signing the oath, declaration, 
or assignment with the required statements. This would provide an 
alternative to the current procedure in which a legal representative 
(e.g., executor, administrator, guardian, or conservator) must sign the 
oath or declaration for a deceased or legally incapacitated inventor, 
and, if joint inventors are signing the oath or declaration, the joint 
inventors must sign the oath or declaration on behalf of an inventor 
who cannot be found or reached after diligent effort or who refuses to 
sign the oath or declaration.
    In view of 35 U.S.C. 115(e), the Office will permit inventors to 
make the required statements in an assignment executed by the inventor 
and recorded in the Office. When the inventors choose to do so, the 
Office is proposing to require that the assignment cover sheet identify 
such an assignment as also being an oath or declaration. 35 U.S.C. 
111(a)(2)(C) provides that the application ``shall include an oath or 
declaration as prescribed by section 115 of this title.'' Therefore, 
the Office is proposing to require that a copy of any recorded 
assignment submitted pursuant to 35 U.S.C. 115(e) as the inventor oath 
or declaration be filed in the application, rather than merely making 
reference to its recording in regard to the application.
    Under 35 U.S.C. 115(f), the Office is permitted to delay requiring 
an oath or declaration until an application is in condition for 
allowance. The Office considered this option, but considers it better 
for the examination process and patent pendency to continue to require 
the oath or declaration during pre-examination.
    The Office needs to know who the inventors are to prepare patent 
application publications and publish applications at eighteen months 
from their earliest filing date. The Office also needs to know who the 
inventors are to conduct examination (under conditions of patentability 
in effect today as well as in effect under the Leahy-Smith America 
Invents Act). For instance, the Office must know the identity of the 
inventors to determine what prior art may be applied against the 
claimed invention or whether to issue a double patenting rejection. The 
inventorship in an application is not set until an oath or declaration 
is filed. See 37 CFR 1.41(a)(1) (the inventorship of a nonprovisional 
application is that inventorship set forth in the oath or declaration 
as prescribed by 37 CFR 1.63, with certain exceptions).
    In addition, delaying the requirement for an oath or declaration 
until allowance would also significantly add to overall patent 
pendency. The current practice for completing applications (i.e., 
obtaining any outstanding oath or declaration and filing fees) does not 
have a noticeable effect on patent pendency because it takes place 
during pre-examination when the application would otherwise be awaiting 
a first Office action by the examiner and applications are placed in 
the queue for examination by filing date order regardless of the date 
on which they are completed. No Technology Center (other than designs) 
had average first action pendency lower than twenty months to first 
action at the end of fiscal year 2011. See United States Patent and 
Trademark Office Performance and Accountability Report Fiscal Year 
2011, at 162 (table 4) (2011). Thus, the current practice of completing 
applications during pre-examination avoids any noticeable impact on 
first action pendency and overall pendency. Stated differently, 
forwarding applications for examination without an oath or declaration 
would not change the first action pendency either under current first 
action pendency or when the Office reaches a ten-month first action.
    Changing the practice of completing applications during pre-
examination such that an oath or declaration is not required until an 
application is otherwise in condition for allowance would require the 
Office to issue some type of action (e.g., an action under Ex parte 
Quayle, 1935 Dec. Comm'r Pat. 11 (1935)) to obtain an oath or 
declaration before the Office is able to issue a notice of allowance 
under 35 U.S.C. 151. This would require an extra action during the 
examination process in any application in which an oath or declaration 
is not present before examination. About 33 percent of applications do 
not contain an oath or declaration on filing. In addition, based upon 
data for fiscal year 2011 in the Patent Application Location and 
Monitoring (PALM) database system, the average time taken for 
applicants to reply to an Ex parte Quayle action was 52 days, and the 
average time taken by examiners to respond to an applicant's reply to 
an Ex parte Quayle action was 32 days. Thus, a change in practice to 
permit an oath or declaration to be filed after the Office is ready to 
mail a notice of allowance could increase the total pendency for 
allowed applications by between one and three months (depending upon 
whether only 33 percent of applicants or all applicants delayed 
submission of an oath or declaration). This is also why identification 
of the inventor(s) in the application itself to be followed after the 
notice of allowance with the oath or declaration is insufficient.
    The approach that will allow for an efficient publication and 
examination process while minimizing the impact on patent pendency is 
for an application to be completed prior to examination. Assignees 
should consider getting the oath or declaration and any assignment 
document executed concurrently or in the common declaration-assignment 
document provided for in 35 U.S.C. 115(e) before filing an application. 
The Office also plans to streamline its practices to permit an assignee 
or an obligated assignee to readily execute an oath or declaration, or 
a person who

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otherwise shows sufficient proprietary interest to be able to readily 
execute an oath or declaration on behalf of an inventor, when such 
inventor is not able, willing, or available to execute the oath or 
declaration. Finally, for those few applicants who actually need more 
time than is permitted for completing applications during pre-
examination, the Office has practices that would permit an extended 
period for completing an application (Pilot Program for Extended Time 
Period To Reply to a Notice To File Missing Parts of Nonprovisional 
Application, 75 FR 76401 (Dec. 8, 2010)), and will be proposing other 
ways to permit applicants to have additional time to complete an 
application for examination (see Track III of the Enhanced Examination 
Timing Control Initiative, 75 FR 31763 (June 4, 2010)).
    The Office also considered discontinuing the practice of charging a 
surcharge for an application in which the oath or declaration is not 
present on filing. Applications that are not complete on filing (e.g., 
are filed without an oath or declaration, or without the filing fee) 
require special processing on the part of the Office. The Office 
appreciates that some applications need to be filed to avoid a loss of 
rights before all of the formal documents or fees are ready, but the 
Office thinks that the cost of the special processing required for such 
applications should be borne by those applicants who require special 
processing and not by applicants whose applications are complete on 
filing.
    Consistent with 35 U.S.C. 115(g), the Office will permit applicants 
who executed an oath or declaration in a prior application, where 
appropriate, to use a copy of that oath or declaration in all 
continuing applications, including continuation-in-part applications, 
with the caveat that any added inventors in the continuing application 
must execute an original oath or declaration.
    While the Office recognizes the ability of any person making a 
statement under 35 U.S.C. 115 to correct the statement at any time, 
including after issuance of the patent, as provided in 35 U.S.C. 
115(h), the Office will not review the submission of such a document if 
it is not timely presented during prosecution of the application, 
except where there is a correction of inventorship in a patent made 
pursuant to 35 U.S.C. 256 and 37 CFR 1.324.
    Consistent with the amendments made to 35 U.S.C. 115 and 251, the 
Office proposes changes to reissue practice to: (1) Delete the 
requirement for a reissue oath or declaration to include a statement 
that all errors arose without any deceptive intent on the part of the 
applicant; (2) eliminate the requirement for a supplemental oath or 
declaration when a claim is amended, and require a corrected oath or 
declaration only where all errors previously identified in the reissue 
oath or declaration are no longer being relied upon as the basis for 
reissue; (3) require applicants to specifically identify any broadening 
of a patent claim, rather than merely provide an alternative statement 
that applicant is correcting an error of either claiming more or less 
than a patentee was entitled to claim; and (4) clarify that a single 
claim containing both a broadening and a narrowing of the claimed 
invention is to be treated as a broadening. These changes will provide 
for more efficient processing of reissue applications and improve the 
quality of patents, in accordance with the intent of the Leahy-Smith 
America Invents Act. In order to implement the conforming amendment 
made to 35 U.S.C. 251 in Section 4(b)(2) of the Leahy-Smith America 
Invents Act, the Office is also proposing to amend the rules to permit 
an assignee of the entire interest who filed an application under 35 
U.S.C. 118 that was patented to sign the reissue oath or declaration in 
a reissue application of such patent (even if the reissue application 
is a broadening reissue).
    Where the Director grants a patent on an application filed under 
amended 35 U.S.C. 118 by a person other than the inventor, the Office 
must grant the patent to the real party in interest. Therefore, the 
Office proposes to require applicants other than the inventor to notify 
the Office of any change in ownership of the application no later than 
payment of the issue fee. Absent any such notification, the Office will 
presume no change in ownership of the application has occurred.
    The Office, under the authority provided by 35 U.S.C. 2(b)(2), also 
proposes changes to the rules of practice for power of attorney, 
prosecution of an application by an assignee, and foreign priority 
claims to facilitate prosecution of applications and improve the 
quality of patents. Juristic entities who seek to take over prosecution 
of an application will need to do so via a registered practitioner. 
Juristic entity includes entities such as corporations or other non-
human entities created by law and given certain legal rights. This 
practice is consistent with the general rule in Federal courts that a 
juristic entity must be represented by counsel admitted to practice 
before the court. See, e.g., Osborn v. Bank of United States, 22 U.S. 
(9 Wheat.) 738, 830 (1824) (a corporation can appear in court only by 
attorney); Richdel, Inc. v. Sunspool Corp., 699 F.2d 1366 
(Fed.Cir.1983) (corporation must be represented in court by an 
attorney); Southwest Express Co., Inc. v. Interstate Commerce 
Commission, 670 F.2d 53, (5th Cir. 1982) (a corporation or partnership 
must be represented in court by an attorney). The Office's experience 
is that the vast majority of juristic entities act via a registered 
practitioner, but a small number attempt to prosecute applications 
``pro se.''
    Other proposed changes include: providing for the carryover of a 
power of attorney in continuation and divisional applications, and in 
continuation-in-part applications where the inventorship is the same as 
in the immediate prior application; permitting practitioners who have 
acted only in a representative capacity in an application to change the 
correspondence address after a patent has issued; accepting the 
signature of a practitioner of record on a statement under 37 CFR 
3.73(b) on behalf of an assignee without requiring further evidence of 
the practitioner's authority to act on behalf of the assignee; 
providing a procedure for handling conflicts between different 
purported assignees attempting to control prosecution; and harmonizing 
the practice regarding foreign priority claims with the practice 
regarding domestic benefit claims by requiring both types of claims to 
be set forth in an application data sheet.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.1: Section 1.1(e) is proposed to be amended to update the 
mail stop designation for communications relating to patent term 
extensions under 35 U.S.C. 156 to make it consistent with the Office's 
list of mail stops. Mail stops assist the Office in routing 
correspondence to the office or area assigned with treating it. Use of 
mail stops is not required but is strongly recommended, even where the 
documents are submitted via the Office's electronic filing system-Web 
(EFS-Web). A mail stop designation can help the Office more quickly 
identify the type of document where applicant did not select the 
correct document code when uploading a document through EFS-Web. For 
this reason, use of mail stops is encouraged.
    Applicants are reminded that initial requests for patent term 
extension may not be submitted via EFS-Web and must be filed in paper. 
These initial requests are handled differently by Office

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personnel than other types of official patent correspondence. 
Therefore, the use of a mail stop will help ensure that initial 
requests are properly recognized and processed in a timely manner.
    Section 1.4: Section 1.4(e) is proposed to be amended to require 
that a payment by credit card in patent cases may only be submitted 
with an original handwritten signature personally signed in permanent 
dark ink or its equivalent. This change is proposed to avoid possible 
controversies regarding use of an S-signature (Sec.  1.4(d)(2)) instead 
of a handwritten signature (Sec.  1.4(d)(1)) for credit card payments, 
e.g., a request for refund where there is a change of purpose by the 
applicant and the request is based on use of an S-signature rather than 
a handwritten signature.
    Section 1.31: Section 1.31 is proposed to be amended to create 
paragraphs (a) and (b). Section 1.31(a) would retain the subject matter 
of the first sentence of current Sec.  1.31 with the second sentence of 
current Sec.  1.31 being placed in paragraph (b). Section 1.31(a) is 
proposed to be amended, under the authority provided by 35 U.S.C. 
2(b)(2), to include a provision that a juristic entity must be 
represented by a patent practitioner. An additional clarification is 
provided that prosecution by a juristic entity is governed by Sec.  
3.71(a), and the taking of action by an assignee is governed by Sec.  
3.73. See also the discussion of Sec.  1.33(f).
    Section 1.32: Section 1.32(d) is proposed to be added to address 
the filing in a continuing application of powers of attorney from the 
parent application. Proposed Sec.  1.32(d) provides that a power of 
attorney from a prior application for which benefit is claimed under 35 
U.S.C. 120, 121, or 365(c) in a continuing application may have effect 
in the continuing application if the inventorship of the continuing 
application is the same as the prior application or one or more 
inventors from the prior application has been deleted in the continuing 
application, and if a copy of the power of attorney from the prior 
application is filed in the continuing application. Current Sec.  
1.63(d)(4) (proposed to be deleted in this notice) provides that, when 
filing continuation and divisional applications and including a copy of 
a declaration from the parent application, applicants should 
``identify'' in the continuation or divisional any change in power of 
attorney that occurred after the filing of the parent application. The 
requirement in Sec.  1.63(d)(4) to ``identify'' the change in power of 
attorney has been interpreted differently by applicants causing 
confusion for the Office as to who has the power of attorney. For 
example, some applicants have filed a copy of the power of attorney 
from the parent, while others have filed a copy of only the notice of 
acceptance of power of attorney or just made a statement about the 
power of attorney in a transmittal letter that accompanied the 
continuation or divisional application. Because of these past 
inconsistencies in ``identifying'' a change in power of attorney, 
specifically requiring a copy of the power of attorney from the prior 
application to be filed in the continuing application (even where a 
change in power did not occur in the prior application) will make the 
record clear with respect to who has power of attorney.
    The Office does not recommend that practitioners use a combined 
declaration and power of attorney document and no longer provides a 
combined declaration and power of attorney form on its Internet Web 
site. The power of attorney should be from the assignee where one 
exists. Otherwise, the assignee may be paying the bill, while the 
inventor is providing the power of attorney, thereby possibly raising 
an issue as to who is the practitioner's client. Additionally, 
relationships between an assignee and the inventors may deteriorate. It 
is not uncommon in these situations for inventors to stop cooperating, 
and in some cases, file powers of attorney in an attempt to control 
prosecution of the application.
    Section 1.32(e) is proposed to be added to clarify that, where a 
power of attorney has been granted by all of the inventors (as opposed 
to the assignee), the addition of an inventor pursuant to a request 
granted under Sec.  1.48 results in the loss of that power of attorney 
unless the added inventor provides a power of attorney consistent with 
the existing power of attorney from the other inventors. This provision 
does not preclude a practitioner from acting pursuant to Sec.  1.34, if 
applicable.
    A power of attorney is a written document by which a principal 
(i.e., the applicant for patent or assignee of entire interest) 
authorizes one or more patent practitioners or joint inventors to act 
on his or her behalf. See Sec.  1.32(a). Where a power of attorney from 
the inventors is already present in the application file, and a request 
is filed to add one or more inventors pursuant to Sec.  1.48, the grant 
of the Sec.  1.48 request results in the power of attorney of record 
being signed by less than all of the inventors. The Manual of Patent 
Examining Procedure specifies that papers giving a power of attorney in 
an application will not be accepted when signed by less than all of the 
inventors unless accompanied by a petition under Sec.  1.183 and fee 
under Sec.  1.17(f) demonstrating the extraordinary situation where 
justice requires the waiver of the requirement in Sec.  1.32(b)(4) that 
all of the inventors sign the power of attorney. See Manual of Patent 
Examining Procedure (MPEP) Sec.  402.10 (8th ed. 2001) (Rev. 8, July 
2010). Because the inventive entity changes upon grant of the Sec.  
1.48 request, the power of attorney of record can no longer be 
effective in the application.
    It should be noted that a practitioner may only act in a 
representative capacity on behalf of all of the applicants or owners of 
a patent application, unless a petition is granted in accordance with 
MPEP Sec.  402.10. Section 1.34 does not authorize a practitioner to 
take action in a patent application where he or she has authority or a 
power of attorney from less than all of the inventors or owners, and is 
not provided as a means to subvert the petition requirements set forth 
in MPEP Sec.  402.10. Where a power of attorney was already of record 
in the file prior to the filing and grant of the Sec.  1.48 request, 
and the practitioner cannot secure a power of attorney from each added 
inventor, the procedures set forth in MPEP Sec.  402.10 must be 
followed, unless a power of attorney from the assignee of the entire 
right, title, and interest, or from partial assignees who collectively 
make up the entire right, title, and interest (after ownership is 
established pursuant to Sec.  3.71) is filed.
    Section 1.33: Section 1.33(a) is proposed to be amended to specify 
that if an applicant provides more than one correspondence address in a 
single paper or in multiple papers submitted on one day, the Office 
will select one of the specified addresses for use as the 
correspondence address and, if given, may select the correspondence 
address associated with a Customer Number over a typed correspondence 
address. This proposal addresses the problem that arises when 
applicants provide multiple correspondence addresses in a single paper 
(e.g., providing both a typed correspondence address and a Customer 
Number in a single paper) or multiple papers (e.g., an oath or 
declaration, a transmittal letter, and a preliminary amendment that 
each includes a different correspondence address) on one day, and the 
Office inadvertently did not select the correspondence address actually 
desired by applicant. The Office may then need to re-mail papers to the 
desired address. This proposed change does not affect the hierarchy 
provided in Sec.  1.76(d) for inconsistencies between an application 
data sheet and other documents. The

[[Page 987]]

proposed change is intended to encourage applicants to carefully review 
their submissions to ensure that the Office receives clear instructions 
regarding the correspondence address.
    Section 1.33(b)(3) is proposed to be removed and reserved in view 
of changes proposed in Sec.  1.33(f), which provides that a juristic 
entity may prosecute a patent application only through a patent 
practitioner. See the discussion of proposed Sec.  1.33(f), below.
    Section 1.33 is proposed to be amended to add a new Sec.  1.33(f) 
to provide that an assignee may only conduct prosecution of an 
application in accordance with Sec. Sec.  1.31 and 3.71. Thus, all 
papers submitted on behalf of a juristic entity must be signed by a 
patent practitioner. This change is proposed because juristic entities 
have been attempting to prosecute patent applications before the Office 
pro se and consequently requesting additional assistance from the 
examiner. Juristic entities attempting to prosecute patent applications 
before the Office pro se also make more procedural errors that result 
in delays in prosecution. Accordingly, this proposal will facilitate a 
reduction in the Office backlog by reducing the delays.
    Section 1.33 is proposed to be amended to add a new Sec.  1.33(g) 
to replace Sec.  1.63(d)(4) with respect to the correspondence address. 
Where application papers from a prior application are used in a 
continuing application and the correspondence address was changed 
during the prosecution of the prior application, an application data 
sheet or separate paper identifying the updated correspondence address 
to be used for the continuing application must be submitted. Otherwise, 
the Office may not recognize the change of correspondence address 
effected during the prosecution of the prior application. Where copies 
of submitted papers, e.g., an oath or declaration, contain an outdated 
address (that was changed during prosecution of the prior application), 
an application data sheet or separate paper identifying the updated 
correspondence address to be used must be submitted. Presently, some 
applicants file continuing applications with copies of papers from the 
prior application that include correspondence addresses to former law 
firms or that are no longer current. The proposal would facilitate the 
processing of patent applications by the Office by making it easier to 
determine the correct correspondence address and reduce the number of 
instances where the Office mails correspondence to an incorrect 
address.
    Section 1.33 is proposed to be amended to add a new Sec.  1.33(h) 
to provide that a practitioner acting in a representative capacity in 
an application may change the correspondence address after the patent 
has issued, provided that the change of correspondence address is 
accompanied by a statement that notice has been given to the applicant 
or owner. Proposed Sec.  1.33(h) is intended to provide a means for 
practitioners acting in a representative capacity in an application to 
effect a change in correspondence address after the patent has granted 
but would not provide authority to a practitioner acting under Sec.  
1.34 to change the correspondence address in an application after a 
Sec.  1.63 oath or declaration by any of the inventors has been filed. 
See Sec.  1.33(a)(2).
    Practitioners that file and prosecute an application in a 
representative capacity, pursuant to Sec.  1.34, usually provide their 
business address as the correspondence address of record. Once the 
patent issues, some practitioners attempt to withdraw as attorney or 
agent by filing a petition, and also attempt to change the 
correspondence address to direct correspondence to the applicant's or 
owner's address. Such attempts are not successful as the current rules 
do not permit the correspondence address to be changed by a 
practitioner acting in a representative capacity, nor will the Office 
grant withdrawal where a practitioner is not of record. See Change in 
Procedure for Requests to Withdraw from Representation In a Patent 
Application, 1329 Off. Gaz. Pat. Office 99 (Apr. 8, 2008). There have 
been instances where practitioners acting in a representative capacity 
have indicated that they have repeatedly requested that the client 
change the correspondence address, but the client has refused to submit 
the change of correspondence address to the Office. Proposed Sec.  
1.33(h) would permit practitioners to change the correspondence address 
after a patent has issued where practitioners have provided notice to 
the applicants or owners.
    Section 1.41: Section 1.41(a)(3) is proposed to be amended to 
delete the language regarding provision of the citizenship of each 
person believed to be an inventor when the application papers for a 
nonprovisional application are filed without an oath or declaration as 
prescribed by Sec.  1.63, or when application papers for a provisional 
application are filed without a cover sheet as prescribed by Sec.  
1.51(c)(1). Thus, only the name and residence of each person believed 
to be an inventor should be provided when nonprovisional application 
papers are filed without an oath or declaration or provisional 
application papers are filed without a cover sheet.
    Section 1.41(a)(4) is proposed to be amended to simplify correction 
of inventorship in a national stage application under 35 U.S.C. 371. 
Under the current provision of Sec.  1.41(a)(4), to correct 
inventorship, applicants must either: (1) File an oath or declaration 
executed by the inventors identified in the international phase and 
then follow the procedures under Sec.  1.48(b) or (c) to correct 
inventorship due to claim amendments; or (2) file a request to correct 
inventorship under Sec.  1.497(d), where inventorship was erroneously 
identified in the international phase. The proposed amendment to Sec.  
1.41(a)(4) treats national stage applications as analogous to 
applications filed under 35 U.S.C. 111(a) in that the first submission 
of an executed oath or declaration acts to correct the earlier 
identification of inventorship. See current Sec.  1.48(f)(1).
    Section 1.41(c) is proposed to be amended to differentiate between 
the mere delivery of a patent application and other correspondence to 
the Office and the signing of official correspondence. Proposed Sec.  
1.41(c) would provide that any person may physically or electronically 
deliver an application for patent and related correspondence, including 
fees, to the Office on behalf of the inventor(s), except that an oath 
or declaration (Sec.  1.63) can only be made in accordance with Sec.  
1.64. Proposed Sec.  1.41(c) would also provide that amendments and 
other papers must be signed in accordance with Sec.  1.33(b). This is 
consistent with the language of current Sec.  1.33(b).
    Section 1.42: Section 1.42 is proposed to be amended to set forth 
the procedures for satisfying the oath or declaration provisions of 35 
U.S.C. 115 for deceased and legally incapacitated inventors in 
paragraphs (a) through (c). Current Sec.  1.42 provides that in the 
case of the death of an inventor, the legal representative (e.g., 
executor, administrator, etc.) of the deceased inventor may make the 
necessary oath or declaration, and apply for and obtain the patent. 
Current Sec.  1.43 provides that in the case of an inventor who is 
legally incapacitated, the legal representative (e.g., guardian, 
conservator, etc.) of the legally incapacitated inventor may make the 
necessary oath or declaration, and apply for and obtain the patent. 35 
U.S.C. 115(d) sets forth the permitted circumstances in which the 
applicant for patent may provide a substitute statement in lieu of 
executing an oath or declaration under 35 U.S.C. 115(a). Specifically, 
the permitted

[[Page 988]]

circumstances in which a substitute statement may be made with respect 
to an individual include: (1) Where the individual is deceased; (2) 
where the individual is legally incapacitated; (3) where the individual 
cannot be found or reached after diligent effort; or (4) where the 
individual is under an obligation to assign the invention but has 
refused to make the oath or declaration required under 35 U.S.C. 
115(a). Proposed Sec.  1.42 would cover the first two permitted 
circumstances, while proposed Sec.  1.47 would cover the last two 
permitted circumstances. It is noted that 35 U.S.C. 115(d) also gives 
the Director the authority to specify additional circumstances by 
regulation.
    Amended 35 U.S.C. 118 provides for a person to whom the inventor 
has assigned or is under an obligation to assign the invention to make 
an application for patent, and for a person who otherwise shows 
sufficient proprietary interest in the matter to make an application 
for patent on behalf of, and as 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. Accordingly, the Office is 
proposing amendments to Sec.  1.42 to provide for the ability of the 
assignee, a party to whom the inventor is under an obligation to assign 
the invention, or a party who otherwise shows sufficient proprietary 
interest to execute the oath or declaration under Sec.  1.63 in the 
case of a deceased or legally incapacitated inventor, in addition to 
the legal representative of such an inventor. This oath or declaration, 
together with any necessary showing, constitutes the substitute 
statement provided for in 35 U.S.C. 115(d). The Office is interpreting 
the term ``person'' as used in 35 U.S.C. 118 as including juristic 
persons.
    Proposed Sec.  1.42(a) provides that in the case of the death or 
legal incapacity of the inventor, the legal representative (e.g., 
executor, administrator, guardian, or conservator) of the deceased or 
incapacitated inventor, the assignee, a party to whom the inventor is 
under an obligation to assign the invention or a party who otherwise 
shows sufficient proprietary interest in the matter may execute the 
oath or declaration under Sec.  1.63. Proposed Sec.  1.42(a) further 
provides that the oath or declaration must comply with Sec. Sec.  
1.63(a) and (b) and identify the inventor who is deceased or legally 
incapacitated. Proposed Sec.  1.42(a) further provides that a party who 
shows sufficient proprietary interest in the matter executes the oath 
or declaration on behalf of the deceased or incapacitated inventor.
    Proposed Sec.  1.42(b) provides that a party to whom the inventor 
is under an obligation to assign the invention or a party who otherwise 
has sufficient proprietary interest in the matter who is taking action 
under Sec.  1.42 must file a petition, accompanied by the fee set forth 
in Sec.  1.17(g) and a showing, including proof of pertinent facts, 
either that: (1) The deceased or incapacitated inventor is under an 
obligation to assign the invention to the party; or (2) the party has 
sufficient proprietary interest in the matter to execute the oath or 
declaration on behalf of the deceased or incapacitated inventor and 
that such action is necessary to preserve the rights of the parties. 
Legal representatives of deceased or incapacitated inventors would be 
able to execute the oath or declaration for such an inventor without 
the need for a petition, consistent with the practice under current 
Sec. Sec.  1.42 and 1.43. In addition, assignees would now be able to 
execute the oath or declaration for a deceased or incapacitated 
inventor without the need for a petition. However, a party to whom the 
inventor is under an obligation to assign or a party who otherwise has 
sufficient proprietary interest would need to file a petition as set 
forth in proposed Sec.  1.42(b) in order to execute the oath or 
declaration for a deceased or incapacitated inventor. The proof 
required would be similar to the current proof required when an 
assignee, a party to whom an inventor has agreed in writing to assign 
the invention, or a party who otherwise shows sufficient proprietary 
interest in the matter files a petition under current Sec.  1.47(b). 
The proof required to show proprietary interest and to show that the 
action is necessary to preserve the rights of the parties in a petition 
under current Sec.  1.47(b) is discussed in MPEP Sec. Sec.  409.03(f) 
and (g). The language ``or to prevent irreparable damage'' contained in 
current Sec.  1.47(b) has not been included in proposed Sec.  1.42(b) 
because 35 U.S.C. 118, as amended by the Leahy-Smith America Invents 
Act, does not contain this language.
    Proposed Sec.  1.42(c) contains language similar to current Sec.  
1.42 (second sentence) with the addition of the term ``assignee'' and 
the limitation that the intervention must be ``pursuant to this 
section.'' Thus, where an inventor dies during the time intervening 
between the filing of the application and the granting of a patent 
thereon, the letters patent may be issued to the legal representative 
or the assignee upon proper intervention under Sec.  1.42.
    Section 1.43: Section 1.43 is proposed to be removed and reserved. 
The provisions relating to inventors who are legally incapacitated are 
proposed to be moved to Sec.  1.42 and revised as discussed above.
    Section 1.47: Section 1.47 is proposed to be amended to revise the 
procedures for when an inventor refuses to sign the oath or declaration 
or cannot be reached after diligent effort to sign the oath or 
declaration. Current Sec.  1.47(a) provides a petition procedure for 
when an inventor refuses to sign the oath or declaration or cannot be 
reached after diligent effort, which requires each of the available 
inventors to sign the oath or declaration on behalf of himself or 
herself and the nonsigning inventor, a petition including proof of the 
pertinent facts, the petition fee in Sec.  1.17(g), and the last known 
address of the nonsigning inventor. Current Sec.  1.47(b) provides a 
petition procedure for when all inventors are refusing to sign the oath 
or declaration or cannot be reached after diligent effort and thus no 
inventors are available to sign the oath or declaration. In this 
situation, current Sec.  1.47(b) permits a person to whom the inventor 
has assigned or agreed in writing to assign the invention, or who 
otherwise shows sufficient proprietary interest in the matter, to sign 
the oath or declaration on behalf of and as agent for all the 
inventors. Current Sec.  1.47(b) requires a petition including proof of 
pertinent facts, a showing that such action is necessary to preserve 
the rights of the parties or to prevent irreparable damage, the 
petition fee set forth in Sec.  1.17(g), and the last known address of 
all inventors. Thus, under the current rule, the assignee, a party to 
whom the inventor has agreed in writing to assign the invention, or a 
party who otherwise shows sufficient proprietary interest in the matter 
can only sign the oath or declaration for a nonsigning inventor under 
Sec.  1.47(b), when there are no inventors available to sign the oath 
or declaration.
    Proposed Sec.  1.47(a) provides that if an inventor or a legal 
representative of a deceased or incapacitated inventor refuses to 
execute the oath or declaration, or cannot after diligent effort be 
found or reached to execute the oath or declaration, then the assignee 
of the nonsigning inventor, a party to whom the inventor is obligated 
to assign the invention, or a party who otherwise shows sufficient 
proprietary interest may execute the oath or declaration. Proposed 
Sec.  1.47(a) further provides that a party who shows sufficient 
interest in the matter executes the oath or declaration on behalf of 
the nonsigning inventor. This expands the situations in which an 
assignee, a party to whom the inventor is obligated to assign, or a 
party who otherwise shows sufficient

[[Page 989]]

proprietary interest can execute the oath or declaration beyond what is 
permitted in current Sec.  1.47(b). Thus, even if other inventors are 
signing the oath or declaration, the assignee of the nonsigning 
inventor, a party to whom the inventor is obligated to assign, or a 
party who otherwise shows sufficient proprietary interest would be able 
to execute the oath or declaration for the nonsigning inventor, 
accompanied by the petition under proposed Sec.  1.47(a).
    Proposed Sec.  1.47(b) provides that if a joint inventor or legal 
representative of a deceased or incapacitated joint inventor refuses to 
execute the oath or declaration, or cannot be found or reached after 
diligent effort, the remaining inventor(s) may execute the oath or 
declaration on behalf of himself or herself and the nonsigning 
inventor. This is similar to the practice in current Sec.  1.47(a) 
where the available inventor(s) can execute the oath or declaration on 
behalf of himself of herself and the nonsigning inventor. Current Sec.  
1.47(a) and (b) also apply to nonsigning legal representatives, 
although not expressly stated in the rule. Proposed Sec.  1.47(a) and 
(b) make it explicit in the rule that the provisions apply to 
nonsigning legal representatives of deceased or incapacitated 
inventors.
    Proposed Sec.  1.47(c) provides that any oath or declaration 
executed pursuant to Sec.  1.47 must comply with the requirements of 
Sec.  1.63(a) and (b) and be accompanied by a petition that: (1) 
Includes the petition fee set forth in Sec.  1.17(g); (2) identifies 
the nonsigning inventor, and includes the last known address of the 
nonsigning inventor; and (3) states either that the inventor or legal 
representative cannot be reached after a diligent effort was made, or 
has refused to execute the oath or declaration when presented with a 
copy of the application papers, with proof of the pertinent facts. The 
proof required to show that the inventor refuses to execute the oath or 
declaration, or cannot be found or reached after diligent effort, is 
the same level of proof currently required for Sec.  1.47 petitions and 
is discussed in MPEP Sec.  409.03(d).
    In addition, proposed Sec.  1.47(c)(4) requires a party to whom the 
nonsigning inventor is under an obligation to assign the invention, or 
a party who has sufficient proprietary interest in the matter acting 
under Sec.  1.47(a) to also provide a showing, including proof of the 
pertinent facts, either that: (1) The nonsigning inventor is under an 
obligation to assign the invention to the party; or (2) the party has 
sufficient proprietary interest in the matter to execute the oath or 
declaration on behalf of the nonsigning inventor and that such action 
is necessary to preserve the rights of the parties. The proof required 
would be similar to the current proof required when an assignee, a 
party to whom an inventor has agreed in writing to assign the 
invention, or a party who otherwise shows sufficient proprietary 
interest in the matter files a petition under current Sec.  1.47(b). As 
noted above in the discussion regarding proposed Sec.  1.42, the proof 
required to show proprietary interest and to show that the action is 
necessary to preserve the rights of the parties is discussed in MPEP 
Sec.  409.03(f) and (g). The language ``or to prevent irreparable 
damage'' contained in current Sec.  1.47(b) has not been included in 
proposed Sec.  1.47(c) because amended 35 U.S.C. 118 does not contain 
this language.
    Proposed Sec.  1.47(d) contains language similar to current Sec.  
1.47(c). Specifically, proposed Sec.  1.47(d) provides that the Office 
will publish notice of the filing of the application in the Official 
Gazette, and the Office may send notice of the filing of the 
application to the nonsigning inventors at the address(es) provided in 
the petition under Sec.  1.47. The option to give notice via 
publication in the Official Gazette helps the Office to reach 
nonsigning inventors, particularly when the Office knows that such 
notice, if sent to the address(es) provided in the petition, would only 
be returned to the Office as being undeliverable. Proposed Sec.  
1.47(d) also permits the Office to dispense with the notice provision 
in a continuing application (including a continuation-in-part), not 
just a continuation or divisional application, if notice regarding the 
filing of the prior application was given to the nonsigning inventor 
such as by publication in the Official Gazette.
    Proposed Sec.  1.47(e) provides that a nonsigning inventor or legal 
representative may subsequently join in the application by submitting 
an oath or declaration under Sec.  1.63 subsequent to a Sec.  1.47 
petition being granted. This is similar to language contained in 
current Sec.  1.47(a) and (b) that provides for a nonsigning inventor 
to subsequently join in the application by filing an executed oath or 
declaration complying with Sec.  1.63. Proposed Sec.  1.47(e) also 
provides that the submission of an oath or declaration by a nonsigning 
inventor or legal representative after a Sec.  1.47 petition has been 
granted will not permit the nonsigning inventor or legal representative 
to revoke or grant a power of attorney. This is not a change in 
practice but is merely a clarification of power of attorney practice.
    Section 1.48: Section 1.48 is proposed to be amended to add 
paragraph (k) to provide for a simplified procedure for correcting 
inventorship in a national stage application. As discussed below, 
current Sec.  1.497(d) and (e), which include provisions for correcting 
inventorship in a national stage application, are proposed to be 
deleted. The corrective procedure in proposed Sec.  1.48(k) has been 
simplified in light of the amendment to 35 U.S.C. 116 eliminating the 
requirement that the error in inventorship ``arose without any 
deceptive intention'' on the part of the inventor being added or the 
inventor being deleted. Proposed Sec.  1.48(k) provides that the 
procedure in Sec.  1.48(a) may also be used for correcting an error in 
inventorship in a national stage application under 35 U.S.C. 371 prior 
to becoming a nonprovisional application, and for correcting an error 
in the inventive entity set forth in an executed declaration submitted 
under PCT Rule 4.17(iv).
    Section 1.48 is also proposed to be amended to eliminate the 
``without deceptive intention'' requirement (as this requirement has 
been eliminated from 35 U.S.C. 116), and delete the reference to Sec.  
1.43 (as Sec.  1.42 is proposed to be amended to include the subject 
matter of Sec.  1.43).
    Section 1.53: Section 1.53(f)(4) is proposed to be amended by 
revising reference to Sec.  1.63(d) consistent with the proposed change 
in Sec.  1.63(d). Specifically, the terms ``continuation'' and 
``divisional'' in paragraph (f)(4) would be replaced by ``continuing'' 
to reflect that proposed Sec.  1.63(d) also covers continuation-in-part 
applications.
    Section 1.55: Sections 1.55(a)(1)(i), (c), and (d)(1)(ii) are 
proposed to be amended to require a foreign priority claim be 
identified in an application data sheet (Sec.  1.76), or a supplemental 
application data sheet, as is appropriate. The revision is intended to 
make clear what may be a confusing practice to practitioners. 
Currently, a foreign priority claim may be located anywhere in an 
application for Sec.  1.55 compliance, while compliance with current 
Sec.  1.63(c) requires the foreign priority claim must be supplied in 
an application data sheet or identified in the oath or declaration. 
Thus, it is possible for an applicant's foreign priority claim to 
comply with Sec.  1.55, but not Sec.  1.63(c). The proposed amendment 
establishes a single location for the foreign priority claim in the 
application data sheet, which would facilitate application processing 
by providing practitioners with a clear location for the foreign 
priority claim, and the Office with one location to quickly locate the 
foreign priority claim.

[[Page 990]]

    35 U.S.C. 119(b) does not specify the particular location in the 
application for setting forth a claim to the benefit of a prior foreign 
application. However, 35 U.S.C. 119(b) provides that the foreign 
application is identified by specifying the application number, country 
or intellectual property authority, and filing date of each foreign 
application for which priority is claimed. In addition, 37 CFR 
1.55(a)(1)(i) requires identification of any foreign application having 
a filing date before that of the application for which priority is 
claimed. Providing this information in the application data sheet 
constitutes the claim for foreign priority as required by 35 U.S.C. 
119(b) and Sec.  1.55(a).
    Providing this information in a single location will facilitate 
more efficient processing of applications, as the Office will only have 
to look at one location for the priority claim and the most recent 
application data sheet will govern. Currently, the Office must look at 
the specification, amendments to the specification, the oath or 
declaration, the application data sheet (if provided), and elsewhere to 
determine the priority claim. When applicants provide inconsistent 
information relating to the claim for foreign priority, the Office must 
then determine which priority claim governs.
    Additionally, providing this information in a single location will 
facilitate review of patents and patent application publications, 
because applications frequently provide a benefit and/or foreign 
priority claim in the first sentence(s) of the specification, which is 
super