Proposed Patent Rule Would Change Administrative Requirements for Inventor Oaths

As I mentioned yesterday, the U.S. Patent and Trademark Office recently published several proposed patent rule changes in connection with the Leahy-Smith America Invents Act. This is post is the first of several that will discuss the changes outlined by the USPTO.

In the first proposed rulemaking, the USPTO seeks 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.

These changes are good news for inventors and assignees because the existing oath requirements for patent applications were often inconsistent and overly burdensome.

Significant changes include the following:

  • A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.
  • 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.
  • If an inventor or legal representative thereof refuses to execute the oath or declaration, or cannot be found or reached after diligent effort, the assignee, or a party who otherwise shows sufficient proprietary interest in the matter may execute the oath or declaration.
  • When carrying over a power of attorney from a parent case to a continuing case, a copy of the power of attorney from the prior application must be filed in the continuing application (even where a change in power did not occur in the prior application).
  • 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.

Please contact me for a copy of the proposed rules, and stay tuned for additional information about the other proposed rule changes next week.


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