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

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. 

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 LeahySmith 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 (http:// 

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® portable 

document format or MICROSOFT 

WORD® format. Comments not 

submitted electronically should be 

submitted on paper in a format that 

facilitates convenient digital scanning 

into ADOBE® 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 (http://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 LeahySmith 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 earlierfiled 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 earlierfiled 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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984 Federal Register / Vol. 77, No. 4 / Friday, January 6, 2012 / Proposed Rules 

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 preexamination. 

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 LeahySmith 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 (§ 1.4(d)(2)) instead of a 

handwritten signature (§ 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 § 1.31 with the second sentence 

of current § 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 § 3.71(a), and the 

taking of action by an assignee is 

governed by § 3.73. See also the 

discussion of § 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 § 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 

§ 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 § 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 § 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 § 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 § 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 § 1.48, the grant of 

the § 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 § 1.183 and fee under 

§ 1.17(f) demonstrating the 

extraordinary situation where justice 

requires the waiver of the requirement 

in § 1.32(b)(4) that all of the inventors 

sign the power of attorney. See Manual 

of Patent Examining Procedure (MPEP) 

§ 402.10 (8th ed. 2001) (Rev. 8, July 

2010). Because the inventive entity 

changes upon grant of the § 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 § 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 § 402.10. Where a power 

of attorney was already of record in the 

file prior to the filing and grant of the 

§ 1.48 request, and the practitioner 

cannot secure a power of attorney from 

each added inventor, the procedures set 

forth in MPEP § 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 

§ 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 § 1.76(d) for 

inconsistencies between an application 

data sheet and other documents. The 


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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 § 1.33(f), which 

provides that a juristic entity may 

prosecute a patent application only 

through a patent practitioner. See the 

discussion of proposed § 1.33(f), below. 

Section 1.33 is proposed to be 

amended to add a new § 1.33(f) to 

provide that an assignee may only 

conduct prosecution of an application 

in accordance with §§ 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 § 1.33(g) to 

replace § 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 § 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 § 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 

§ 1.34 to change the correspondence 

address in an application after a § 1.63 

oath or declaration by any of the 

inventors has been filed. See 

§ 1.33(a)(2). 

Practitioners that file and prosecute 

an application in a representative 

capacity, pursuant to § 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 § 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 § 1.63, or when 

application papers for a provisional 

application are filed without a cover 

sheet as prescribed by § 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 § 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 § 1.48(b) or (c) to 

correct inventorship due to claim 

amendments; or (2) file a request to 

correct inventorship under § 1.497(d), 

where inventorship was erroneously 

identified in the international phase. 

The proposed amendment to § 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 § 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 § 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 

(§ 1.63) can only be made in accordance 

with § 1.64. Proposed § 1.41(c) would 

also provide that amendments and other 

papers must be signed in accordance 

with § 1.33(b). This is consistent with 

the language of current § 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 § 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 § 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 


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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 § 1.42 

would cover the first two permitted 

circumstances, while proposed § 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 § 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 § 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 § 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 

§ 1.63. Proposed § 1.42(a) further 

provides that the oath or declaration 

must comply with §§ 1.63(a) and (b) and 

identify the inventor who is deceased or 

legally incapacitated. Proposed § 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 § 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 § 1.42 must file a 

petition, accompanied by the fee set 

forth in § 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 §§ 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 § 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 § 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 

§ 1.47(b) is discussed in MPEP 

§§ 409.03(f) and (g). The language ‘‘or to 

prevent irreparable damage’’ contained 

in current § 1.47(b) has not been 

included in proposed § 1.42(b) because 

35 U.S.C. 118, as amended by the 

Leahy-Smith America Invents Act, does 

not contain this language. 

Proposed § 1.42(c) contains language 

similar to current § 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 § 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 § 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 § 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 § 1.17(g), and the last 

known address of the nonsigning 

inventor. Current § 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 § 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 § 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 

§ 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 § 1.47(b), when there are no 

inventors available to sign the oath or 

declaration. 

Proposed § 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 § 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 


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proprietary interest can execute the oath 

or declaration beyond what is permitted 

in current § 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 § 1.47(a). 

Proposed § 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 

§ 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 § 1.47(a) 

and (b) also apply to nonsigning legal 

representatives, although not expressly 

stated in the rule. Proposed § 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 § 1.47(c) provides that any 

oath or declaration executed pursuant to 

§ 1.47 must comply with the 

requirements of § 1.63(a) and (b) and be 

accompanied by a petition that: (1) 

Includes the petition fee set forth in 

§ 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 

§ 1.47 petitions and is discussed in 

MPEP § 409.03(d). 

In addition, proposed § 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 § 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 § 1.47(b). As 

noted above in the discussion regarding 

proposed § 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 § 409.03(f) and (g). The language 

‘‘or to prevent irreparable damage’’ 

contained in current § 1.47(b) has not 

been included in proposed § 1.47(c) 

because amended 35 U.S.C. 118 does 

not contain this language. 

Proposed § 1.47(d) contains language 

similar to current § 1.47(c). Specifically, 

proposed § 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 § 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 § 1.47(d) 

also permits the Office to dispense with 

the notice provision in a continuing 

application (including a continuationin-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 § 1.47(e) provides that a 

nonsigning inventor or legal 

representative may subsequently join in 

the application by submitting an oath or 

declaration under § 1.63 subsequent to a 

§ 1.47 petition being granted. This is 

similar to language contained in current 

§ 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 § 1.63. Proposed § 1.47(e) also 

provides that the submission of an oath 

or declaration by a nonsigning inventor 

or legal representative after a § 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 § 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 

§ 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 § 1.48(k) 

provides that the procedure in § 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 § 1.43 (as § 1.42 is proposed 

to be amended to include the subject 

matter of § 1.43). 

Section 1.53: Section 1.53(f)(4) is 

proposed to be amended by revising 

reference to § 1.63(d) consistent with the 

proposed change in § 1.63(d). 

Specifically, the terms ‘‘continuation’’ 

and ‘‘divisional’’ in paragraph (f)(4) 

would be replaced by ‘‘continuing’’ to 

reflect that proposed § 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 (§ 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 § 1.55 compliance, 

while compliance with current § 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 

§ 1.55, but not § 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. 


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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 § 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 superseded by an application 

data sheet that includes a different 

benefit or foreign priority claim, and 

thus the benefit claim and/or foreign 

priority information included in the first 

sentence(s) of the specification is 

different from the benefit claim and/or 

foreign priority information contained 

on the front page of the patent or patent 

application publication. While the 

benefit and/or foreign priority claim on 

the front page of the patent or patent 

application publication is usually 

correct, anyone (including an examiner, 

a practitioner, or the public) reviewing 

the patent or patent application 

publication must review the file history 

of the application to verify this to be 

correct. 

Since most applications are filed with 

an application data sheet, requiring the 

benefit and/or foreign priority claims to 

be included in the application data 

sheet will not require most practitioners 

to change their practice. 

Section 1.63: Section 1.63(a) is 

proposed to be amended to recite 

applicability of the paragraph to both 35 

U.S.C. 111(a) national applications and 

35 U.S.C. 371 national stage 

applications of international PCT 

applications. Section 1.63(a)(1) is 

proposed to be amended to delete the 

statement relating to a lack of a 

minimum age requirement as 

unnecessary in view of the later 

requirement, proposed § 1.63(a)(6) 

(reformatted from current § 1.63(b)(2)), 

that the person signing has reviewed 

and understands the contents of the 

application. 

Section 1.63(a)(2) is proposed to be 

amended to simplify the requirement for 

the inventor name to be his or her full 

name without reference to a family or 

given name, but an initial may only be 

provided for the middle name. The 

requirement for a full name is sufficient, 

given that individuals do not always 

have both a family name and a given 

name, or have varying understandings 

of what a ‘‘given’’ name requires. 

Section 1.63(a)(3) is proposed to be 

amended to delete the requirement for 

identifying the country of citizenship 

for each inventor, as this information 

has been deleted as a requirement from 

35 U.S.C. 115. Section 1.63(a)(3) would 

also be amended to set forth a 

requirement to identify the application 

to which the oath or declaration is 

directed (currently set forth in 

§ 1.63(b)(1)). 

Section 1.63(a)(4) is proposed to be 

amended to delete the requirement that 

the person executing the oath or 

declaration state that he or she is 

believed to be the ‘‘first’’ inventor 

consistent with the language in 35 

U.S.C. 115(b)(2) and with the statutory 

change to a first-inventor-to-file system 

from a first-to-invent system. 

Additionally, § 1.63(a)(4) is proposed to 

be clarified by adding the term ‘‘joint’’ 

before inventors and referring to the 

submission of the oath or declaration 

rather than referring to a patent being 

sought. 

Section 1.63(a)(5) is proposed to be 

added to contain the requirement from 

35 U.S.C. 115(b)(1) that the oath or 

declaration state that the application 

was made or was authorized to be made 

by the inventor. 

Section 1.63(a)(6) is proposed to be 

added to contain the requirement from 

current § 1.63(b)(2) that the person 

making the oath or declaration has 

reviewed and understands the 

application. Sections 1.63(a)(4) and 

(a)(6), as proposed, also require that the 

averments therein be applicable in any 

application for which the oath or 

declaration is being submitted such as a 

continuing application. 

Section 1.63(a)(7) is proposed to be 

added to contain the requirement from 

current § 1.63(b)(3) regarding the § 1.56 

duty being acknowledged. 

Section 1.63(b) is proposed to be 

amended by reciting the requirements 

for the mailing address and the 

residence of an inventor (transferred 

from current § 1.63(c)(1)), and adds the 

alternative of using an application data 

sheet (transferred from current 

§ 1.63(c)). The mailing address 

requirement would be further clarified 

by noting that it is the address where 

the inventor ‘‘customarily receives 

mail,’’ which may encompass an 

address where the inventor works, a 

post office box, or other address where 

mail is received, even if it is not the 

main mailing address of the inventor. 

The mailing address is for the benefit of 

the inventor in the event that the Office 

needs to contact the inventor directly. 

Accordingly, care should be taken in 

identifying the mailing address, but the 

requirement is not one that the Office 

would investigate or confirm its 

accuracy. Current §§ 1.63(b)(1) through 

(b)(3) are proposed to be deleted as the 

requirements are moved to other 

portions of proposed § 1.63 (i.e., current 

paragraph (b)(1) is moved to paragraph 

(a)(3), current paragraph (b)(2) is moved 

to paragraph (a)(6), and current 

paragraph (b)(3) is moved to paragraph 

(a)(7)). 

Section 1.63(c) and (c)(1) are 

proposed to be amended by moving the 

current requirements to paragraph (b). 

Current § 1.63(c)(2) is proposed to be 

amended by deleting the current 

requirement for identifying the claim for 

foreign priority under § 1.55 in the oath 

or declaration. This amendment reflects 

the Office’s desire to harmonize 

presentation of a claim for foreign 

priority under § 1.55 and of a claim for 

domestic benefit under § 1.78. The 

current requirement that the domestic 

claim for benefit be placed in the first 

sentence(s) of the specification or an 

application data sheet (§ 1.76), while 

requiring that a foreign priority claim be 

identified in an oath or declaration or 

application data sheet has led to 

confusion by applicants as to the proper 

placement of these priority or benefit 

claims and to Office processing issues of 

such claims. As Section 3 of the LeahySmith America Invents Act has placed 

foreign priority claims on equal footing 

as domestic benefit claims regarding 

what may be relied upon as a prior art 

date, it is important that there be one 

unified place that the Office and the 

public can rely upon in determining the 

presence of these claims. Accordingly, 

§§ 1.55 and 1.78 are proposed to be 

amended to provide for a unified way in 

the application data sheet to present 

foreign priority and domestic benefit 


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claims for inclusion in a printed patent 

or a patent application publication. 

Sections 1.63(c)(1)(i) and (ii) are 

proposed to provide for the use of 

assignments to also include the oath or 

declaration as provided in 35 U.S.C. 

115(e). Proposed §§ 1.63(c)(1)(i) and (ii) 

would provide that the inventor can, 

when executing an assignment of his or 

her invention, include the information 

and statements that would be required 

under §§ 1.63(a) and (b). Section 

1.63(c)(1)(ii) would require that the 

assignment be made of record by 

recording the assignment, and filing the 

copy of the assignment in the 

application for which it is being used as 

an oath or declaration. If the assignment 

has not been recorded prior to its 

reliance in an application, the 

assignment may be sent for recording at 

the same time it is being submitted in 

the application, provided applicant 

makes a statement to that effect. 

Applicants need to be mindful of the 

proposed amendment in § 3.31 requiring 

a conspicuous indication, such as by 

use of a check-box on the assignment 

cover sheet, to alert the Office that an 

assignment submitted with an 

application is submitted for a dual 

purpose: recording in the assignment 

database, such as to support a power of 

attorney, and for use in the application 

as the oath or declaration. Assignments 

cannot be recorded unless an 

application number is provided against 

which the assignment is to be recorded. 

Currently, when an assignment is 

submitted for recording along with a 

paper application, the assignment is 

separated from the paper application 

and forwarded to the Assignment 

Recordation Branch for recording in its 

database at the time when the 

application is assigned an application 

number. The assignment in such case 

does not become part of the application 

file. 

Under the proposed new permitted 

use of an assignment as including an 

oath or declaration, the Office, when it 

receives an assignment with a paper 

application filing, will continue to 

forward the assignment to the 

Assignment Recordation Branch 

without making it part of the 

application file, unless the check-box is 

used on the assignment cover sheet to 

indicate the intended use of the 

assignment to comply with the oath or 

declaration requirement. Where the 

check-box is used, the Office will make 

a copy of the assignment to scan the 

assignment into the Image File Wrapper 

(IFW) file for the application before 

forwarding it to the Assignment 

Recordation Branch. Failure to utilize 

the check-box will result in a Notice to 

File Missing Parts of Nonprovisional 

Application for an oath or declaration, 

as the assignment will not be made part 

of the application file and the Office 

will not recognize compliance with the 

§ 1.63 oath or declaration requirement. 

A copy of the assignment would need to 

be submitted in reply to the Notice 

along with the surcharge for the late 

submission of the oath or declaration. 

The Office has considered not 

requiring use of a check-box and 

automatically scanning an assignment 

into the IFW file for the application, but 

the Office believes that applicants 

should be provided with the option of 

submitting an assignment only for 

recordation purposes without such 

assignment becoming part of the IFW 

file. 

For EFS-Web filing of application 

papers, EFS-Web does not accept 

assignments for recording purposes 

when filing an application. See Legal 

Framework for Electronic Filing 

System—Web (EFS-Web), 74 FR 55200, 

55202 (Oct. 27, 2009). Recording of 

assignments may only be done 

electronically in EPAS (Electronic 

Patent Assignment System), 

notwithstanding the existence of a link 

from EFS-Web to EPAS that can be 

utilized to file an assignment after the 

application is filed. Accordingly, for 

EFS-Web submissions, all assignments 

submitted on filing of the application or 

later submitted will be made of record 

in the application (entered into the 

Image File Wrapper (IFW)), and will not 

be forwarded to the Assignment 

Recordation Branch for recordation by 

the Office. Thus, an assignment must be 

separately submitted to the Assignment 

Recordation Branch, and in the 

application file where the assignment is 

to be used for a dual purpose. It is the 

intention of the Office to develop a 

system whereby one submission of an 

assignment can be electronically treated 

for the dual purpose. 

The Office considered whether a 

clarifying amendment to § 1.12(b) 

should be made to state that a recorded 

assignment should be available to the 

public where it is used as the oath or 

declaration. However, assignment 

records are available to the public 

whenever the related application is 

available to the public. As proposed, a 

copy of the recorded assignment 

document would become part of the 

application file and would be available 

to the public when the application 

becomes available to the public. 

Section 1.63(c)(2) is proposed to 

provide that any reference to an oath or 

declaration pursuant to § 1.63 would 

include the assignment as provided for 

in § 1.63. 

Section 1.63(d)(1) is proposed to be 

amended to provide that a newly 

executed oath or declaration in an 

application claiming benefit under 35 

U.S.C. 120, 121, or 365(c) is not required 

in a later-filed application where the 

oath or declaration in the earlier-filed 

application is compliant with § 1.78. 

Section 1.63(d)(1) is also proposed to be 

amended to add a reference to 

§ 1.497(a). 

The Office considered whether to 

restrict the use of a copy of an oath or 

declaration to one from an ‘‘immediate’’ 

earlier-filed application, but determined 

that an oath or declaration copy could 

be used from any earlier-filed 

application in a chain of benefit claims 

so long as the oath or declaration 

continues to be appropriate. This 

interpretation reflects the breadth of the 

language utilized by the statute. 

35 U.S.C. 115(g)(1)(A) provides an 

exception to the requirement for an oath 

or declaration for applications where 

the application claims the benefit under 

35 U.S.C. 120, 121, or 365(c) of the filing 

of an earlier-filed application. As a 

claim for benefit under 35 U.S.C. 120 

includes continuation-in-part (CIP) 

applications, it is also proposed to 

extend the use of copies of oaths or 

declarations to CIP applications where 

appropriate, in addition to the current 

continuations and divisional 

applications, by the use of the term 

‘‘continuing.’’ Applicants are advised 

that it would not be proper to submit 

any paper, e.g., a copy of a declaration, 

in a continuing application that 

contains misstatements relative to the 

continuing application. Sections 

1.63(a)(4) and (a)(6) are proposed to 

require that their statements (that the 

person executing the oath or declaration 

believes the named inventor or joint 

inventors to be the original inventor or 

original joint inventors of the claimed 

invention in the application, and that 

the person making the oath or 

declaration has reviewed and 

understands the contents of the 

application) be applicable to the 

‘‘application for which the oath or 

declaration is being submitted,’’ which 

includes any continuing application for 

which a copy of an oath or declaration 

is being submitted under 35 U.S.C. 

115(g) and § 1.63(d). Thus, the following 

statements in the oath or declaration 

must be true for the continuing 

application in order for an oath or 

declaration from a prior application to 

be properly submitted in the continuing 

application under 35 U.S.C. 115(g) and 

§ 1.63(d): (1) That the person executing 

the oath or declaration believes the 

named inventor or joint inventors to be 

the original inventor or original joint 


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inventors of the claimed invention in 

the application for which the oath or 

declaration is being submitted (i.e., the 

oath or declaration states the correct 

inventorship for the continuing 

application); (2) that the person making 

the oath or declaration has reviewed 

and understands the contents of the 

application for which the oath or 

declaration is being submitted, 

including the claims, as amended by 

any amendment specifically referred to 

in the oath or declaration; and (3) that 

the person making the oath or 

declaration acknowledges the duty to 

disclose to the Office all information 

known to the person to be material to 

patentability as defined in § 1.56. 

Section 1.63(d)(1)(i) is proposed to be 

simplified by eliminating the word 

‘‘nonprovisional’’ as unnecessary since 

provisional applications do not require 

an oath or declaration, and by referring 

to compliance with the section as 

opposed to individual paragraphs of the 

section. Section 1.63(d)(1)(ii) is 

proposed to contain the requirement set 

forth in current § 1.63(d)(1)(iv) relating 

to the oath or declaration copy showing 

the signature or an indication thereon 

that it was signed. The requirement of 

current § 1.63(d)(1)(ii), relating to 

deleting inventors, is proposed to be 

moved to proposed § 1.63(d)(2). The 

requirement of current § 1.63(d)(1)(iii) is 

proposed to be deleted in view of the 

applicability of proposed § 1.63(d) to 

continuing applications, including 

continuation-in-part applications. 

Current § 1.63(d)(1)(iv) subject matter, 

relating to the presence of a signature, 

is proposed to be moved to proposed 

§ 1.63(d)(1)(ii). Section 1.63(d)(1)(iii) is 

proposed to require that any new 

inventors named in the continuing 

application provide an executed oath or 

declaration in compliance with this 

section. 

Section 1.63(d)(2) is proposed to 

contain the requirements set forth in 

current §§ 1.63(d)(1)(ii) and 1.63(d)(2) 

relating to the continuing application 

seeking to name fewer inventors and a 

statement requesting deletion of the 

name or names of the person who are 

not inventors. It is also proposed to 

require that such a statement requesting 

deletion be signed pursuant to § 1.33(b). 

Additionally, proposed § 1.63(d)(2) 

applies to continuing applications to 

include continuation-in-part 

applications, rather than just 

continuation and divisional 

applications. 

Section 1.63(d)(3) is proposed to 

contain the requirements of current 

§ 1.63(d)(3), (d)(3)(i), and (d)(3)(ii) in 

simplified form. The provision for 

submission of a copy of an oath or 

declaration where the earlier-filed 

application has been accorded status 

under § 1.47 has been expanded to cover 

§ 1.42 situations relating to a deceased 

or legally incapacitated inventor. 

Current § 1.63(d)(4) is proposed to be 

deleted. The power of attorney in a 

continuing application would be 

covered in proposed § 1.32. The 

correspondence address in a continuing 

application would be treated in 

proposed § 1.33(g). 

Section 1.63(d)(5) is proposed to be 

deleted. Whether a newly executed 

declaration by an added inventor is 

required in a continuing application 

would be covered by § 1.63(d)(1). 

Section 1.63(e) is proposed to be 

revised in that the current requirement 

for a newly executed declaration in 

(CIP) applications would be covered by 

§ 1.63(d)(1). It is proposed that § 1.63(e) 

be amended to cover the submission of 

oaths or declarations pursuant to 35 

U.S.C. 115(h)(1). 35 U.S.C. 115(h)(1) 

provides that any person making a 

statement under this section may at any 

time ‘‘withdraw, replace, or otherwise 

correct the statement at any time.’’ 

Section 1.63(e) as proposed would 

acknowledge that an oath or declaration 

submitted at any time pursuant to 35 

U.S.C. 115(h)(1) would be placed in the 

file record of the application or patent, 

but may not be reviewed by the Office 

in view of the open ended time frame 

that the statute provides. Oaths or 

declarations submitted pursuant to 35 

U.S.C. 115(h)(1) that are timely 

submitted during prosecution of an 

application would continue to be 

reviewed for compliance. A reminder is 

set forth that mere submission of an 

oath or declaration pursuant to 35 

U.S.C. 115(h)(1) would not, however, 

act to correct inventorship as 

compliance with § 1.48 in an 

application and § 1.324 in a patent is 

required. 

Section 1.64: Section 1.64(b) is 

proposed to be amended to eliminate 

the requirement that the oath or 

declaration must state the citizenship of 

the legal representative who is signing 

the oath or declaration for a deceased 

inventor. Since the requirement for an 

inventor to state his country of 

citizenship in the oath or declaration 

has been eliminated from 35 U.S.C. 115, 

there is no basis to require the legal 

representative of an inventor to state the 

legal representative’s citizenship. 

Section 1.64(b) is also proposed to be 

amended to change the phrase 

‘‘deceased inventor’’ to ‘‘deceased or 

legally incapacitated inventor’’ in the 

second sentence. This change would 

require both a legal representative of a 

deceased inventor and a legal 

representative of an incapacitated 

inventor to state that the person is a 

legal representative. Additionally, the 

residence and mailing address of the 

legal representative would also be 

required, but § 1.64 is proposed to be 

amended to permit such information to 

be provided in an application data 

sheet. This will permit the submission 

of such information without requiring 

additional contact with the legal 

representative of a deceased or legally 

incapacitated inventor. Section 1.64(b) 

is also proposed to be amended to delete 

the reference to § 1.43 since § 1.43 is 

proposed for combination with § 1.42. 

Section 1.67: The title of § 1.67 is 

proposed to be amended to 

‘‘Noncompliant oath or declaration’’ to 

better focus on the purpose of the rule. 

35 U.S.C. 115(h) limits the situations in 

which the Office may require a 

supplemental oath or declaration. 

Section 1.67 is amended to address the 

manner in which deficiencies in an oath 

or declaration can be corrected. 

Section 1.67(a) is proposed to be 

amended to refocus the language therein 

away from a supplemental oath or 

declaration to an oath or declaration 

that complies with the requirements of 

35 U.S.C. 115 and § 1.63 or 1.162. 

Sections 1.67(a)(1) and (2) are proposed 

to be amended to conform to the 

changes to the title and § 1.67(a) by 

replacing the term ‘‘supplemental’’ with 

‘‘in compliance,’’ and to delete reference 

to § 1.43 as § 1.43 is being proposed to 

be combined with § 1.42. Section 

1.67(a)(3) is proposed to be amended by 

deleting the explanatory parentheses as 

unnecessary in view of the crossreference to § 1.63 and updating the 

reference to recite § 1.63(b). 

Additionally, it is proposed to refer to 

a supplemental application data sheet in 

place of application data sheet, as a 

§ 1.76 submission submitted after filing 

of the application must be a 

supplemental application data sheet and 

not an application data sheet even 

though it is the first § 1.76 submission. 

Section 1.67(b) is proposed to retain 

the material from current § 1.67(b) 

relating to no new matter by deleting the 

term ‘‘supplemental,’’ as revised § 1.67 

is clarified to be directed towards 

noncompliant oaths or declarations 

correcting deficiencies or inaccuracies. 

Section 1.76: Section 1.76(a) is 

proposed to be amended to clarify that 

an application data sheet may be 

submitted in an international 

application entering the national stage 

under 35 U.S.C. 371. Section 1.76(a) is 

also proposed to be amended to require 

that an application data sheet must be 

submitted to claim priority to or the 

benefit of a prior-filed application under 


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35 U.S.C. 119, 120, 121, or 365 for 

consistency with the proposed changes 

to §§ 1.55 and 1.78. 

Section 1.76(c)(1) is proposed to be 

amended to clarify that after an 

application has been filed, a 

supplemental application data sheet, 

not an application data sheet, is 

required. Section 1.76(c)(2) is proposed 

to be amended to require that changes 

to the information must be indicated by 

underlining for insertions of text, and 

strike-through or brackets for deletions 

of text. 

The revision is intended to make clear 

the difference between an application 

data sheet and a supplemental 

application data sheet. When an 

application data sheet is provided, the 

application data sheet becomes part of 

the application as filed and thus it does 

not have to be signed by the applicant, 

unless it is a form such as PTO/SB/14 

and a nonpublication request is being 

made by the applicant on the form. 

When a supplemental application data 

sheet is provided, the supplemental 

application data sheet is an amendment 

to the application, and therefore the 

supplemental application data sheet 

must be signed in accordance with 

§ 1.33(b). Applicants are also 

encouraged and reminded to use and 

submit an application data sheet (PTO/ 

SB/14) as an EFS-Web Fillable Form, 

rather than a scanned PDF image, to 

benefit from having the data loaded 

directly into USPTO electronic systems 

(there is no Office form for a 

supplemental application data sheet). 

Use of an application data sheet benefits 

both the Office and patent practitioners 

as the data is loaded directly into the 

USPTO electronic systems, thus the data 

is accurately captured, reducing time 

that is needed to review the Filing 

Receipt. 

Representative information including 

the registration number of each 

practitioner, or the customer number, 

appointed with a power of attorney or 

authorization of agent in the application 

may be provided on an application data 

sheet. Providing this information in the 

application data sheet does not 

constitute a power of attorney or 

authorization of agent in the application 

(see §§ 1.76(b)(4), 1.34). 

Section 1.76(d) continues to set forth 

the procedure for resolving 

inconsistencies between application 

data sheets and other documents. The 

Office contemplated clarifying this 

subsection to address the situation 

where inconsistent information 

regarding a benefit claim and/or foreign 

priority is supplied by the application 

data sheet and the specification as filed, 

and provide that the application data 

sheet will govern. In view of the 

proposed changes to §§ 1.55 and 1.78, 

which state that benefit and/or foreign 

priority claims must be in an 

application data sheet, there is no need 

for this further clarification. 

Section 1.76(d)(1) is proposed to be 

amended to exclude foreign priority 

claims in accordance with § 1.55(a)(1) 

and benefit claims in accordance with 

§§ 1.78(a)(2)(iii) and 1.78(a)(5)(iii) from 

this subsection of the rule, which 

indicates which information will govern 

when inconsistent information is 

provided in an application. With the 

amendments to §§ 1.55(a)(1), 

1.78(a)(2)(iii), and 1.78(a)(5)(iii), the 

foreign priority claim and/or benefit 

claim must be in the application data 

sheet. Thus, an amendment to the 

specification will not govern over a 

foreign priority claim or benefit claim in 

an application data sheet. 

Section 1.78: Section 1.78(a)(2)(iii) is 

proposed to be amended such that the 

reference requirement for a benefit 

claim to a prior-filed nonprovisional 

application or international application 

designating the United States of 

America by a later-filed nonprovisional 

application must be in an application 

data sheet or a supplemental application 

data sheet. 

Sections 1.78(a)(5)(iii) is proposed to 

be amended such that the reference 

requirement for a benefit claim to a 

prior-filed provisional application by a 

later-filed nonprovisional application 

must be in an application data sheet or 

a supplemental application data sheet. 

Providing this information in the 

application data sheet constitutes the 

specific reference required by 35 U.S.C. 

119(e) or 120. The patent statute 

requires that a claim to the benefit of a 

provisional (35 U.S.C. 119(e)(1)) or 

nonprovisional (35 U.S.C. 120) be in the 

application by specific reference 

thereto. Since the application data sheet 

(if provided) is considered part of the 

application, the specific reference to an 

earlier filed provisional or 

nonprovisional application in the 

application data sheet meets the 

‘‘specific reference’’ requirement of 

35 U.S.C. 119(e)(1) or 120. 

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 benefit claim and the most recent 

application data sheet will govern. 

Currently, the Office must look at the 

specification, amendments to the 

specification, and the application data 

sheet if provided to determine the 

benefit claim. When applicants provide 

inconsistent information between the 

three sources, the Office must then 

determine which benefit claim governs 

in accordance with the rule. 

Providing this information in a single 

location will also 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 

amended by an application data sheet 

that includes a different benefit or 

foreign priority claim, and thus the 

benefit claim and/or foreign priority 

information included in the first 

sentence(s) of the specification is 

different from the benefit claim and/or 

foreign priority information contained 

on the front page of the patent or patent 

application publication. While the 

benefit and/or foreign priority claim on 

the front page of the patent or patent 

application publication is usually 

correct, anyone (including an examiner, 

a practitioner, or the public) reviewing 

the patent or patent application 

publication must review the file history 

of the application to verify this to be 

correct. 

Since most applications are filed with 

an application data sheet, requiring 

benefit and/or foreign priority claims to 

be included in the application data 

sheet will not require most practitioners 

to change their practice. 

Section 1.172: Section 1.172 is 

proposed to be amended in its title to 

delete the duplicative reference to 

assignees, as assignees may be an 

applicant in some circumstances for a 

reissue application. Section 1.172 is 

proposed to be reformatted to clarify 

who may sign, and what documents 

must accompany, a reissue oath or 

declaration. Section 1.172(a) is 

proposed to be amended to continue to 

require that the reissue oath or 

declaration must be accompanied by the 

written consent of all assignees, if any, 

owning an undivided interest in the 

patent. Current subject matter in 

§ 1.172(a) relating to not enlarging the 

scope of the claims would be transferred 

to paragraph (b) and the assignment 

information transferred to paragraph (c). 

Section 1.172(b) is proposed to be 

amended to focus on signing of the oath 

or declaration and includes paragraph 

titles to distinguish between who may 

sign the reissue oath or declaration for 

a nonbroadening reissue (proposed 

§ 1.172(b)(1)(i) through (b)(1)(iii)) versus 

a broadening reissue (§ 1.172(b)(2)(i) 

and (b)(2)(ii)). Current subject matter in 

§ 1.172(b) would be moved to proposed 

§ 1.172(d). Section 1.172(b)(2)(ii) is 

proposed to authorize the assignee of 

the entire interest to sign the reissue 

oath or declaration for a broadening 

reissue filed on or after September 16, 


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2012, where the application for the 

original patent was filed by the assignee 

of the entire interest (i.e., the oath or 

declaration was executed by the 

assignee under § 1.42 or § 1.47). 

Section 1.172(c) includes the language 

already present in current § 1.172(a) and 

clarifies that all assignees, including 

partial assignees, who consent to the 

reissue must establish their ownership 

in the patent. Section 1.172(d) repeats 

the language found in current § 1.172(b). 

Section 1.175: Section 1.175(a) is 

proposed to be amended to clarify the 

requirement that an applicant identify 

in the reissue oath or declaration each 

applicable reason that forms the basis 

for reissue. The reasons include: (1) A 

defective specification or drawing 

(§ 1.175(a)(1)); (2) the patentee claiming 

more than the patentee had a right to 

claim in the patent (§ 1.175(a)(2)); and 

(3) the patentee claiming less than the 

patentee had the right to claim in the 

patent (§ 1.175(a)(3)). Proposed 

§ 1.175(a)(3) also requires identification 

of a broadened claim and a broadened 

portion of the specification, if a change 

thereto is the basis for the claim 

broadening. 

Section 1.175(a) retains the 

requirement from current § 1.175(a)(1) 

that the reissue oath or declaration 

identify at least one error that is being 

relied upon as the basis for reissue and 

recites the statutory basis for reissue, 35 

U.S.C. 251. Examples of proper error 

statements are discussed in MPEP 

§ 1414, II. The reissue oath or 

declaration may identify more than one 

specific error that forms the basis of the 

reissue, but at least one error must be 

identified. 

Section 1.175(b) is proposed to be 

amended to clarify that a claim 

broadened in any respect must be 

treated and identified as a broadened 

claim. In addition, § 1.175(b) is 

proposed to be further amended to 

delete the requirement for supplemental 

reissue oaths or declarations in view of 

the change to 35 U.S.C. 251 in Section 

20 of the Leahy-Smith America Invents 

Act (i.e., removal of the ‘‘without any 

deceptive intention’’ provision). A claim 

that is broadened in any respect is a 

broadened claim for purposes of 35 

U.S.C. 251. See Tillotson, Ltd. v. Walbro 

Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 

1987), In re Ruth, 278 F.2d 729, 730 

(CCPA 1960), and In re Rogoff, 261 F.2d 

601, 603 (CCPA 1958). The requirement 

that a claim broadened in any respect be 

treated as a broadened claim is 

important to distinguish who can sign 

the reissue oath or declaration. It also is 

important because a reissue application 

that broadens the scope of the original 

patent may only be filed within two 

years from the grant of the original 

patent. See MPEP § 1412.03 for the 

meaning of a ‘‘broadened reissue claim’’ 

and examples. 

An application that does not seek to 

broaden the scope of the original patent 

may be filed with a reissue oath or 

declaration that is executed by the 

assignee of the entire right, title, and 

interest. However, if the reissue 

application broadens one or more of the 

claims in any respect, the reissue oath 

or declaration must be executed by the 

inventors, the legal representatives of 

deceased or legally incapacitated 

inventors, or a § 1.47 applicant for a 

nonsigning inventor (proposed 

§ 1.172(b)(2)(i)). As discussed above, the 

assignee of the entire interest may sign 

the reissue oath or declaration for a 

broadening reissue filed on or after 

September 16, 2012, where the 

application for the original patent was 

filed by the assignee of the entire 

interest (proposed § 1.172(b)(2)(ii)), that 

is, the oath or declaration was executed 

by the assignee under §§ 1.42 or 1.47. 

Section 1.175(c) is proposed to be 

amended to clarify that where all errors 

identified in the reissue oath or 

declaration pursuant to proposed 

§ 1.175(a) are no longer being relied 

upon as the basis for reissue, a reissue 

oath or declaration that identifies a new 

error currently being relied upon as the 

basis for reissue must be filed. The 

elimination of supplemental reissue 

oaths or declarations in current 

§ 1.175(b) is directed towards lack of 

deceptive intent regarding the error 

being corrected, and not the statutory 

requirement of identification of at least 

one error. Section 1.175(c) is also 

proposed to be amended to clarify that 

the reissue oath or declaration that 

identifies the new error currently being 

relied upon as the basis for reissue need 

only address the new error and need not 

identify any prior error identified in a 

reissue oath or declaration. This 

requirement is consistent with the 

discussion in MPEP § 1414.01, I. 

The reissue oath or declaration must 

identify a proper error that forms the 

basis for reissue. If the specified error is 

no longer being corrected in the reissue 

application, then a new error must be 

identified in the reissue oath or 

declaration so that the record is clear in 

identifying a proper basis for reissue. 

The latest reissue oath or declaration 

need not identify each specific error that 

was identified in any earlier reissue 

oath or declaration; it must only identify 

an error that is currently being relied 

upon or corrected. 

Section 1.175(e) is proposed to be 

amended to provide a title to identify 

the paragraph’s applicability to 

continuing applications, MPEP 1414, II, 

and to clarify in the rule the ability to 

file copies of reissue oaths or 

declarations from prior reissue 

applications in continuing applications 

consistent with § 1.63(d). Section 

1.175(e) would now consist of 

paragraphs (e)(1), (e)(2), (e)(2)(i) and (ii). 

Section 1.175(e)(1) is proposed to 

provide that where a continuing reissue 

application replaces a prior reissue 

application, the requirement for a 

reissue oath or declaration pursuant to 

§ 1.172 may be satisfied by a copy of the 

reissue oath or declaration from the 

prior reissue application it replaces. The 

concept of a ‘‘prior application,’’ in this 

paragraph and in paragraph (e)(2), is 

intended to be broader than an 

immediate prior application but to stay 

within the bounds of § 1.63(d) and 

require a prior application that is within 

the chain of benefit claim. 

Section 1.175(e)(2) is proposed to 

provide that where a continuing reissue 

application does not replace a prior 

reissue application, the requirement for 

a reissue oath or declaration pursuant to 

§ 1.172 may be satisfied by a newly 

executed oath or declaration that 

identifies at least one error in the 

original patent which has not been 

corrected in a prior reissue application, 

§ 1.175(e)(2)(i), or how an identified 

error is currently being corrected in a 

manner different than in a prior reissue 

application, § 1.175(e)(2)(ii). 

Under current practice, a new oath or 

declaration is required in a continuing 

reissue application notwithstanding that 

there is no change in the error being 

corrected. In certain circumstances, 

such as set forth in the following 

examples, applicants request that they 

be allowed to use a copy of the 

declaration from prior reissue 

application. Some situations currently 

need to be addressed via a petition for 

waiver under § 1.183 with a $400 fee, 

that the Office would grant in 

appropriate circumstances, such as set 

forth in the following example 2. The 

rule as now proposed recognizes the 

unnecessary processing delay and 

expense engendered by this practice, 

which would be rectified by this 

proposed change. 

Accordingly, a copy of a reissue oath 

or declaration from a prior reissue 

application may be submitted in a 

continuing reissue application where 

the continuing application replaces a 

prior reissue application. 

Also, a copy of a reissue oath or 

declaration from a prior reissue 

application may be submitted in a 

continuing application where the 

continuing application does not replace 

a prior application, but only where the 


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identified error was not corrected and 

therefore would continue to apply in the 

continuing reissue application, or where 

the identified error is currently to be 

corrected in the continuing application 

in a manner different than in the prior 

application. However, to do so would 

also require a statement to either effect. 

Otherwise, a reissue oath or declaration 

that identifies a new error that is the 

basis for reissue must be filed. The 

following are examples where a copy 

may be used: 

Example 1: A reissue application is filed 

with a declaration under § 1.175 that lists 

more than one error that properly supports 

reissue. The declaration can be used to file 

a continuing reissue application, even if 

applicant is no longer attempting to correct 

some of the originally listed errors, provided 

that at least one of the originally listed errors 

remains that was not corrected in the prior 

application. Under the current and proposed 

§ 1.175, a copy may be used. 

Example 2: A reissue application is filed to 

amend Claim 4 to limit the general pump 

means to a centrifugal pump, and to 

eliminate the recitation of a refrigeration 

means. The reissue oath or declaration must 

state that the applicant believes the original 

patent to be wholly or partly inoperative or 

invalid by reason of patentee claiming more 

than the patentee had the right to claim in 

the patent (§ 1.175(a)(2)), and patentee 

claiming less than patentee had the right to 

claim, and identify Claim 4 (§ 1.175(a)(3)). 

An identification that the defect was that the 

patentee claimed ‘‘more or less’’ than 

patentee had a right to claim would not 

comply with proposed § 1.175. Moreover, the 

identification that Claim 4 is being 

broadened under proposed § 1.175(a)(3) 

would not be sufficient to specifically 

identify at least one error under proposed 

§ 1.175(a). Applicant must clearly specify the 

defect or error in the language that renders 

the original patent wholly or partly 

inoperative or invalid. The reissue oath or 

declaration must also provide a specific 

identification of one of the errors, e.g., Claim 

4 was unduly limited by the inclusion of 

‘‘refrigeration means’’ and is being amended 

to eliminate this recitation. Under the current 

rule, a petition under § 1.183 is required for 

a copy to be used. Under proposed § 1.175, 

a petition is not required for a copy to be 

used. 

The reference in current § 1.175(e) to 

paragraph (a)(1) of § 1.175 would be 

deleted as it would be unnecessary in 

view of the proposed changes. 

Section 1.175(f) is proposed to be 

added to provide that a reissue oath or 

declaration may be filed at any time 

pursuant to 35 U.S.C. 115(h)(1), and will 

be placed in the file record of the 

reissue application but may not be 

reviewed by the Office in view of the 

open ended time frame that the statute 

provides. Oaths or declarations 

submitted pursuant to 35 U.S.C. 

115(h)(1) that are timely submitted 

during prosecution of an application 

would continue to be reviewed for 

compliance. Proposed § 1.175(f) is 

consistent with the language of 

proposed § 1.63(e). 

Section 1.311: Section 1.311 is 

proposed to be amended by adding a 

new paragraph (c) to implement the 

requirement of 35 U.S.C. 118 that ‘‘[i]f 

the Director grants a patent on an 

application filed under [35 U.S.C. 118] 

by a person other than the inventor, the 

patent shall be granted to the real party 

in interest and upon such notice to the 

inventor as the Director considers to be 

sufficient.’’ Proposed § 1.311(c) provides 

that where an assignee, person to whom 

the inventor is under an obligation to 

assign the invention, or person who 

otherwise shows sufficient proprietary 

interest in the matter has filed an 

application under §§ 1.42, or 1.47, the 

applicant must notify the Office of any 

change in ownership of the application 

no later than payment of the issue fee. 

The Office will treat the absence of such 

a notice as an indication that there has 

been no change in ownership of the 

application. Proposed § 1.311(c) does 

not cover assignees or persons who 

otherwise show sufficient proprietary 

interest, unless the application is filed 

pursuant to §§ 1.42 or 1.47. 

Section 3.81 currently provides that 

an ‘‘application may issue in the name 

of the assignee’’ ‘‘where a request for 

such issuance is submitted with 

payment of the issue fee.’’ This is 

accomplished by providing the assignee 

information in box 3 of the issue fee 

transmittal form, form 85B. The use of 

box 3 would be required where 

ownership of the application changed 

from the filing of the application and 

the application was filed pursuant to 

§§ 1.42 or 1.47. 

Section 1.497: Section 1.497 is 

proposed to be amended to be 

consistent with the amendments to 35 

U.S.C. 115 and the proposed 

amendments to § 1.63. Under the 

current provisions of § 1.497, while an 

oath or declaration in a national stage 

application under 35 U.S.C. 371 must 

comply with the requirements of § 1.63, 

it will be accepted as sufficient for 

purposes of entering the U.S. national 

stage if certain minimum requirements 

are met. See § 1.497(c). The proposed 

amendment to § 1.497(a) through (c) 

maintains this practice. The reference to 

§ 1.43 in current § 1.497(b)(1) and (2) 

would be deleted from the subject 

matter now found in the proposed 

§ 1.497(b)(6). 

Current § 1.497(d) through (e) are 

proposed to be deleted. A simplified 

procedure for correcting inventorship in 

a national stage application is proposed 

to be added to § 1.48, as new subsection 

§ 1.48(k), since § 1.48 covers correction 

of inventorship in patent applications 

(other than reissue). The corrective 

procedure 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 intent’’ on the part of the 

inventor being removed or added. 

Current § 1.497(f) is proposed to be 

deleted because of the amendment to 35 

U.S.C. 115. Current § 1.497(g) is 

proposed to be deleted in view of the 

proposed amendment to § 1.63 

eliminating foreign priority claims from 

the oath or declaration. 

Section 3.31: Section 3.31 is proposed 

to be amended by the addition of new 

paragraph (h) that would implement 35 

U.S.C. 115(e) permitting use of an 

assignment in lieu of an oath or 

declaration to meet the oath or 

declaration requirements of § 1.63. 

Section 3.31(h) is proposed to provide 

that an assignment cover sheet must 

contain a conspicuous indication of an 

intent to utilize the assignment as the 

required oath or declaration under 

§ 1.63. For the importance of complying 

with this provision, see the discussion 

of § 1.63(c). 

Section 3.71: Section 3.71(a) is 

proposed to be amended to be 

consistent with proposed § 1.33, which 

limits prosecution by juristic entities. 

The rule is also proposed to be amended 

to make it clear that conflicts between 

purported assignees are handled in 

accordance with § 3.73(c)(4). 

Section 3.73: Section 3.73(b) is 

proposed to be amended to clarify who 

may sign a statement under § 3.73(b) in 

new paragraph (b)(2)(iii). Under 

§ 3.73(b), an assignee must establish its 

ownership of an application to the 

satisfaction of the Director in order to 

request or take action in a patent or 

trademark matter. Current § 3.73(b)(2) 

specifies that the submission 

establishing ownership must either 

include a statement that the person 

signing the submission is authorized to 

act on behalf of the assignee 

(§ 3.73(b)(2)(i)) or be signed by a person 

who has apparent authority to sign on 

behalf of the assignee (§ 3.73(b)(2)(ii)). 

Section 3.73(b)(2)(iii) is proposed to 

provide that a patent practitioner of 

record pursuant to § 1.32 could sign a 

statement under § 3.73(b). A patent 

practitioner can be considered ‘‘of 

record’’ for purposes of this section 

where the statement under § 3.73(b) is 

accompanied by a power of attorney 

that appoints the practitioner (see 37 

CFR 3.73(b)(1)). Currently, a power of 

attorney to a patent practitioner to 

prosecute a patent application executed 


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by the applicant or assignee of the entire 

interest does not make that practitioner 

an official of the assignee or empower 

the practitioner to sign the submission 

on behalf of the assignee. MPEP § 324, 

V. Patent practitioners who signed 

statements under § 3.73(b) merely on the 

basis of having been appointed in a 

power of attorney document have done 

so improperly. 

Section 3.73(b)(3) is proposed to 

clarify that any subsequent statement 

under § 3.73(b) must provide a complete 

chain of title. Current § 3.73(b)(1)(i) 

requires documentary evidence of a 

chain of title. The submission of a 

subsequent statement under § 3.73(b) 

that only identifies the latest ‘‘link’’ in 

the ownership chain would be 

incomplete and deemed insufficient to 

establish ownership of the application. 

Section 3.73(c)(2) is proposed to be 

amended to better clarify how to 

identify to the Office the entire 

ownership interest. When establishing 

ownership of the application under 

§ 3.73(b), one needs to be cognizant of 

the distinction between 100 percent 

ownership of the right, title, and interest 

in the invention from a single inventor 

and 100 percent ownership of the entire 

right, title, and interest in the invention 

from all of the inventors. This provision 

is applicable such as when one assignee 

owns 100 percent interest from one 

inventor and another assignee owns 100 

percent interest from a different 

inventor. To comply with the 

requirement that the entire right, title, 

and interest be identified, both 

assignees would need to set forth their 

ownership interest by percentage (100 

percent of the entire right, title, and 

interest) § 3.73(c)(2)(i), or both assignees 

would need to provide a statement that 

all parties owning an interest (without 

identification of percentage) have been 

identified, § 3.73(c)(2)(ii). Where a sole 

inventor assigns all rights to companies 

A and B, but the assignment does not 

specify percentages of ownership, the 

statement under § 3.73(b) would need to 

identify that companies A and B 

together own 100 percent of the entire 

right, title, and interest without specific 

individual percentages for company A 

and company B. Otherwise, the Office 

may refuse to accept the submission as 

an establishment of ownership. 

Section 3.73(c)(3) is proposed to 

provide that, for a statement under 

§ 3.73(b) from the prior application to 

have effect in a continuation or 

divisional application, or a 

continuation-in-part application with 

the same inventors or fewer, a copy of 

the statement under paragraph (b) of 

this section from the prior application 

for which benefit is claimed under 35 

U.S.C. 120, 121, or 365(c), must be filed 

in the continuing application. 

Section 3.73(c)(4) is proposed to be 

added to provide that, where two or 

more purported assignees file 

conflicting statements under paragraph 

(b) of this section, the Director will 

determine which, if any, purported 

assignee will be permitted to control 

prosecution of the application. As 

proposed, § 3.73(c)(4) provides in the 

rule the Office’s practice for treating two 

or more conflicting statements under 

§ 3.73(b), currently discussed in MPEP 

§ 324, IX. 

Sections 1.51, 1.53, 1.57, 1.78, 41.37, 

41.67, and 41.110 are proposed to be 

amended to substitute references to 35 

U.S.C. 112(a), (b), and (f), for the current 

references to 35 U.S.C. 112, first, 

second, and sixth paragraphs. Sections 

1.45 and 1.48 are proposed to be 

amended to reflect the change regarding 

35 U.S.C. 116. Section 1.173 is proposed 

to be amended to reflect the change 

regarding 35 U.S.C. 251. Sections 1.48, 

1.324, 1.530, and 5.25 are proposed to 

be amended to delete the provisions 

pertaining to a lack of deceptive intent. 

Sections 1.41, 1.46, 1.64, 1.76, 1.131, 

and 1.162 are proposed to be amended 

to delete the references to § 1.43. 

Section 1.76 is proposed to be amended 

to delete the reference to an inventor’s 

citizenship to reflect the change 

regarding 35 U.S.C. 115. 

Rulemaking Considerations 

A. Administrative Procedure Act: The 

primary changes proposed in this notice 

implement the inventor’s oath or 

declaration provisions of the LeahySmith America Invents Act. This notice 

proposes changes to the rules of practice 

that concern the process for applying for 

a patent, namely, the statements 

required in the oath or declaration 

required by 35 U.S.C. 115 for a patent 

application (including the oath or 

declaration for a reissue application), 

the manner of presenting claims for 

priority to or the benefit of prior-filed 

applications under 35 U.S.C. 119, 120, 

121, or 365, and the procedures for 

prosecution of an application by an 

assignee. The changes being proposed in 

this notice do not change the 

substantive criteria of patentability. 

These proposed changes involve rules of 

agency practice and procedure, and/or 

interpretive rules. See Bachow 

Commuc’ns., Inc. v. FCC, 237 F.3d 683, 

690 (D.C. Cir. 2001) (rules governing an 

application process are procedural 

under the Administrative Procedure 

Act); Inova Alexandria Hosp. v. Shalala, 

244 F.3d 242, 350 (4th Cir. 2001) (rules 

for handling appeals were procedural 

where they did not change the 

substantive standard for reviewing 

claims); Nat’l Org. of Veterans’ 

Advocates v. Sec’y of Veterans Affairs, 

260 F.3d 1365, 1375 (Fed. Cir. 2001) 

(rule that clarifies interpretation of a 

statute is interpretive). 

Accordingly, prior notice and 

opportunity for public comment are not 

required pursuant to 5 U.S.C. 553(b) or 

(c) (or any other law) and thirty-day 

advance publication is not required 

pursuant to 5 U.S.C. 553(d) (or any other 

law). See Cooper Techs. Co. v. Dudas, 

536 F.3d 1330, 1336–37 (Fed. Cir. 2008) 

(stating that 5 U.S.C. 553, and thus 35 

U.S.C. 2(b)(2)(B), does not require notice 

and comment rulemaking for 

‘‘interpretative rules, general statements 

of policy, or rules of agency 

organization, procedure, or practice.’’) 

(quoting 5 U.S.C. 553(b)(A)). The Office, 

however, is publishing these changes for 

comment as it seeks the benefit of the 

public’s views on the Office’s proposed 

implementation of these provisions of 

the Leahy-Smith America Invents Act. 

B. Regulatory Flexibility Act: As prior 

notice and an opportunity for public 

comment are not required pursuant to 5 

U.S.C. 553 or any other law, neither a 

regulatory flexibility analysis nor a 

certification under the Regulatory 

Flexibility Act (5 U.S.C. 601 et seq.) is 

required. See 5 U.S.C. 603. 

In addition, for the reasons set forth 

herein, the Deputy General Counsel for 

General Law of the United States Patent 

and Trademark Office has certified to 

the Chief Counsel for Advocacy of the 

Small Business Administration that 

changes proposed in this notice will not 

have a significant economic impact on 

a substantial number of small entities. 

See 5 U.S.C. 605(b). This notice 

proposes changes to the rules of practice 

to implement sections 4 and 20 of the 

Leahy-Smith America Invents Act, 

which provides changes to the 

inventor’s oath or declaration. The 

primary impact of the changes in this 

notice is the streamlining of the 

requirements for oaths and declarations 

and the simplification of the filing of an 

application by the assignee when an 

inventor cannot or will not execute the 

oath or declaration. The burden to all 

entities, including small entities, 

imposed by these rules is a minor 

addition to that of the current 

regulations concerning the inventor’s 

oath or declaration. The change to the 

manner of presenting claims for priority 

to or the benefit of prior-filed 

applications under 35 U.S.C. 119, 120, 

121, or 365 will not have a significant 

economic impact on a substantial 

number of small entities as an 

application data sheet is easy to prepare 

and use, and the majority of patent 


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applicants already submit an 

application data sheet with the patent 

application. The change to reissue oath 

or declaration will not have a significant 

economic impact on a substantial 

number of small entities as reissue is 

sought by the patentee for fewer than 

1,200 of the 1.2 million patents in force 

each year, and a reissue applicant 

already needs to know whether claims 

are being broadened to comply with the 

requirements of 35 U.S.C. 251. The 

change to the procedures for 

prosecution of an application by an 

assignee will not have a significant 

economic impact on a substantial 

number of small entities as it is rare for 

a juristic entity to attempt to prosecute 

a patent application pro se. Therefore, 

the changes proposed in this notice will 

not have a significant economic impact 

on a substantial number of small 

entities. 

C. Executive Order 12866 (Regulatory 

Planning and Review): This rulemaking 

has been determined to be not 

significant for purposes of Executive 

Order 12866 (Sept. 30, 1993). 

D. Executive Order 13563 (Improving 

Regulation and Regulatory Review): The 

Office has complied with Executive 

Order 13563. Specifically, the Office 

has, to the extent feasible and 

applicable: (1) Made a reasoned 

determination that the benefits justify 

the costs of the rule; (2) tailored the rule 

to impose the least burden on society 

consistent with obtaining the regulatory 

objectives; (3) selected a regulatory 

approach that maximizes net benefits; 

(4) specified performance objectives; (5) 

identified and assessed available 

alternatives; (6) involved the public in 

an open exchange of information and 

perspectives among experts in relevant 

disciplines, affected stakeholders in the 

private sector and the public as a whole, 

and provided on-line access to the 

rulemaking docket; (7) attempted to 

promote coordination, simplification, 

and harmonization across government 

agencies and identified goals designed 

to promote innovation; (8) considered 

approaches that reduce burdens and 

maintain flexibility and freedom of 

choice for the public; and (9) ensured 

the objectivity of scientific and 

technological information and 

processes. 

E. Executive Order 13132 

(Federalism): This rulemaking does not 

contain policies with federalism 

implications sufficient to warrant 

preparation of a Federalism Assessment 

under Executive Order 13132 (Aug. 4, 

1999). 

F. Executive Order 13175 (Tribal 

Consultation): This rulemaking will not: 

(1) Have substantial direct effects on one 

or more Indian tribes; (2) impose 

substantial direct compliance costs on 

Indian tribal governments; or (3) 

preempt tribal law. Therefore, a tribal 

summary impact statement is not 

required under Executive Order 13175 

(Nov. 6, 2000). 

G. Executive Order 13211 (Energy 

Effects): This rulemaking is not a 

significant energy action under 

Executive Order 13211 because this 

rulemaking is not likely to have a 

significant adverse effect on the supply, 

distribution, or use of energy. Therefore, 

a Statement of Energy Effects is not 

required under Executive Order 13211 

(May 18, 2001). 

H. Executive Order 12988 (Civil 

Justice Reform): This rulemaking meets 

applicable standards to minimize 

litigation, eliminate ambiguity, and 

reduce burden as set forth in sections 

3(a) and 3(b)(2) of Executive Order 

12988 (Feb. 5, 1996). 

I. Executive Order 13045 (Protection 

of Children): This rulemaking does not 

concern an environmental risk to health 

or safety that may disproportionately 

affect children under Executive Order 

13045 (Apr. 21, 1997). 

J. Executive Order 12630 (Taking of 

Private Property): This rulemaking will 

not effect a taking of private property or 

otherwise have taking implications 

under Executive Order 12630 (Mar. 15, 

1988). 

K. Congressional Review Act: Under 

the Congressional Review Act 

provisions of the Small Business 

Regulatory Enforcement Fairness Act of 

1996 (5 U.S.C. 801 et seq.), prior to 

issuing any final rule, the United States 

Patent and Trademark Office will 

submit a report containing the final rule 

and other required information to the 

United States Senate, the United States 

House of Representatives, and the 

Comptroller General of the Government 

Accountability Office. The changes in 

this notice are not expected to result in 

an annual effect on the economy of 100 

million dollars or more, a major increase 

in costs or prices, or significant adverse 

effects on competition, employment, 

investment, productivity, innovation, or 

the ability of United States-based 

enterprises to compete with foreignbased enterprises in domestic and 

export markets. Therefore, this notice is 

not expected to result in a ‘‘major rule’’ 

as defined in 5 U.S.C. 804(2). 

L. Unfunded Mandates Reform Act of 

1995: The changes proposed in this 

notice do not involve a Federal 

intergovernmental mandate that will 

result in the expenditure by State, local, 

and tribal governments, in the aggregate, 

of 100 million dollars (as adjusted) or 

more in any one year, or a Federal 

private sector mandate that will result 

in the expenditure by the private sector 

of 100 million dollars (as adjusted) or 

more in any one year, and will not 

significantly or uniquely affect small 

governments. Therefore, no actions are 

necessary under the provisions of the 

Unfunded Mandates Reform Act of 

1995. See 2 U.S.C. 1501 et seq. 

M. National Environmental Policy 

Act: This rulemaking will not have any 

effect on the quality of environment and 

is thus categorically excluded from 

review under the National 

Environmental Policy Act of 1969. See 

42 U.S.C. 4321 et seq. 

N. National Technology Transfer and 

Advancement Act: The requirements of 

section 12(d) of the National 

Technology Transfer and Advancement 

Act of 1995 (15 U.S.C. 272 note) are not 

applicable because this rulemaking does 

not contain provisions which involve 

the use of technical standards. 

O. Paperwork Reduction Act: This 

rulemaking involves information 

collection requirements which are 

subject to review by the Office of 

Management and Budget (OMB) under 

the Paperwork Reduction Act of 1995 

(44 U.S.C. 3501 et seq.). The collection 

of information involved in this 

rulemaking has been reviewed and 

previously approved by OMB under 

OMB Control Numbers 0651–0032 and 

0651–0035. The primary impact of the 

changes in this notice is the 

streamlining of the requirements for 

oaths and declarations and the 

simplification of the filing of an 

application by the assignee when an 

inventor cannot or will not execute the 

oath or declaration. The Office is not 

resubmitting an information collection 

package to OMB for its review and 

approval, because the changes in this 

rulemaking do not change patent fees or 

change the information collection 

requirements (the estimated number of 

respondents, time per response, total 

annual respondent burden hours, or 

total annual respondent cost burden) 

associated with the information 

collections approved under OMB 

Control Numbers 0651–0032 and 0651– 

0035. 

Notwithstanding any other provision 

of law, no person is required to respond 

to, nor shall a person be subject to a 

penalty for failure to comply with, a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act, unless that collection of 

information displays a currently valid 

OMB control number. 


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List of Subjects 

37 CFR Part 1 

Administrative practice and 

procedure, Inventions and patents, 

Reporting and recordkeeping 

requirements, Small businesses. 

37 CFR Part 3 

Administrative practice and 

procedure, Patents, Trademarks. 

For the reasons set forth in the 

preamble, 37 CFR parts 1 and 3 are 

proposed to be amended as follows: 

PART 1—RULES OF PRACTICE IN 

PATENT CASES 

1. The authority citation for 37 CFR 

part 1 continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2). 

2. Section 1.1 is amended by revising 

paragraph (e) to read as follows: 

§ 1.1 Addresses for non-trademark 

correspondence with the United States 

Patent and Trademark Office. 

* * * * * 

(e) Patent term extension. All 

applications for extension of patent term 

under 35 U.S.C. 156 and any 

communications relating thereto 

intended for the United States Patent 

and Trademark Office should be 

additionally marked ‘‘Mail Stop HatchWaxman PTE.’’ When appropriate, the 

communication should also be marked 

to the attention of a particular 

individual, such as where a decision has 

been rendered. 

* * * * * 

3. Section 1.4 is amended by revising 

paragraph (e) to read as follows: 

§ 1.4 Nature of correspondence and 

signature requirements. 

* * * * * 

(e) Correspondence requiring a 

person’s signature and relating to 

payment by credit card in patent cases 

or registration to practice before the 

Patent and Trademark Office in patent 

cases, enrollment and disciplinary 

investigations, or disciplinary 

proceedings must be submitted with an 

original handwritten signature 

personally signed in permanent dark ink 

or its equivalent by that person. 

* * * * * 

4. Section 1.31 is revised to read as 

follows: 

§ 1.31 Applicant may be represented by 

one or more patent practitioners or joint 

inventors. 

(a) An applicant for patent may file 

and prosecute his or her own case, or he 

or she may give a power of attorney to 

be represented by one or more patent 

practitioners or joint inventors, except 

that a juristic entity must be represented 

by a patent practitioner. Prosecution by 

a juristic entity is governed by § 3.71(a), 

and the taking of action by any assignee 

is governed by § 3.73. 

(b) The United States Patent and 

Trademark Office cannot aid in the 

selection of a patent practitioner. 

5. Section 1.32 is amended by adding 

new paragraphs (d) and (e) to read as 

follows: 

§ 1.32 Power of attorney. 

* * * * * 

(d) 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 have 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. 

(e) If a power of attorney has been 

granted by all of the inventors and not 

an assignee, the addition of an inventor 

pursuant to § 1.48 results in the loss of 

that power of attorney upon grant of the 

§ 1.48 request, unless the added 

inventor provides a power of attorney 

consistent with the power of attorney 

provided by the other inventors. This 

provision does not preclude a 

practitioner from acting pursuant to 

§ 1.34, if applicable. 

6. Section 1.33 is amended by 

removing and reserving paragraph 

(b)(3), revising the introductory text of 

paragraph (a), and adding new 

paragraphs (f), (g), and (h) to read as 

follows: 

§ 1.33 Correspondence respecting patent 

applications, reexamination proceedings, 

and other proceedings. 

(a) Correspondence address and 

daytime telephone number. When filing 

an application, a correspondence 

address must be set forth in either an 

application data sheet (§ 1.76), or 

elsewhere, in a clearly identifiable 

manner, in any paper submitted with an 

application filing. If no correspondence 

address is specified, the Office may treat 

the mailing address of the first named 

inventor (if provided, see §§ 1.76 (b)(1) 

and 1.63 (c)(2)) as the correspondence 

address. The Office will direct, or 

otherwise make available, all notices, 

official letters, and other 

communications relating to the 

application to the person associated 

with the correspondence address. For 

correspondence submitted via the 

Office’s electronic filing system, 

however, an electronic acknowledgment 

receipt will be sent to the submitter. The 

Office will generally not engage in 

double correspondence with an 

applicant and a patent practitioner, or 

with more than one patent practitioner, 

except as deemed necessary by the 

Director. If more than one 

correspondence address is specified 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 address 

associated with a Customer Number 

over a typed correspondence address. 

For the party to whom correspondence 

is to be addressed, a daytime telephone 

number should be supplied in a clearly 

identifiable manner and may be 

changed by any party who is authorized 

to change the correspondence address. 

The correspondence address may be 

changed as follows: 

* * * * * 

(b) * * * 

(3) [Reserved] 

* * * * * 

(f) An assignee may only conduct 

prosecution of an application in 

accordance with §§ 1.31 and 3.71 of this 

chapter. Unless otherwise specified, all 

papers submitted on behalf of a juristic 

entity must be signed by a patent 

practitioner. 

(g) 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. 

(h) A patent practitioner acting in a 

representative capacity whose 

correspondence address is the 

correspondence address of record 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 patentee or owner. 

7. Section 1.41 is amended by revising 

paragraphs (a)(3), (a)(4) and (c) to read 

as follows: 

§ 1.41 Applicant for patent. 

(a) * * * 

(3) In a nonprovisional application 

filed without an oath or declaration as 

prescribed by § 1.63 or in a provisional 


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application filed without a cover sheet 

as prescribed by § 1.51(c)(1), the name 

and residence of each person believed to 

be an actual inventor should be 

provided when the application papers 

pursuant to § 1.53(b) or § 1.53(c) are 

filed. 

(4) The inventorship of an 

international application entering the 

national stage under 35 U.S.C. 371 is 

that inventorship set forth in the first 

submission of an executed declaration 

under PCT Rule 4.17(iv) or oath or 

declaration under § 1.497, except as 

provided in § 1.63(d). If neither an 

executed declaration under PCT Rule 

4.17(iv) nor executed oath or declaration 

under § 1.497 is filed during the 

pendency of the national stage 

application, the inventorship is that 

inventorship set forth in the 

international application, which 

includes any change effected under PCT 

Rule 92bis. 

* * * * * 

(c) Any person authorized by the 

applicant may physically or 

electronically deliver an application for 

patent and related correspondence, 

including fees, to the Office on behalf of 

the inventor or inventors and provide a 

correspondence address pursuant to 

§ 1.33(a), but an oath or declaration 

(§ 1.63) can only be made in accordance 

with § 1.64 and amendments and other 

papers must be signed in accordance 

with § 1.33(b). 

* * * * * 

8. Section 1.42 is revised to read as 

follows: 

§ 1.42 When the inventor is deceased or 

legally incapacitated. 

(a) 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, or a party to 

whom the inventor is under an 

obligation to assign the invention or 

party who otherwise shows sufficient 

proprietary interest in the matter may 

execute the oath or declaration under 

§ 1.63, provided that the oath or 

declaration complies with the 

requirements of § 1.63(a) and (b) and 

identifies the inventor who is deceased 

or legally incapacitated. A party who 

shows sufficient proprietary interest in 

the matter executes the oath or 

declaration on behalf of the deceased or 

incapacitated inventor. 

(b) 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 taking action under this section 

must do so by way of a petition that is 

accompanied by the fee set forth in 

§ 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 pursuant 

to § 1.63 on behalf of the deceased or 

incapacitated inventor and that such 

action is necessary to preserve the rights 

of the parties. 

(c) If the 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 assignee 

upon proper intervention pursuant to 

this section. 

9. Section 1.43 is removed and 

reserved. 

§ 1.43 [Reserved] 

10. Section 1.47 is revised to read as 

follows: 

§ 1.47 When an inventor refuses to sign or 

cannot be reached. 

(a) If an inventor or legal 

representative thereof (§ 1.42) refuses to 

execute the oath or declaration under 

§ 1.63, or cannot be found or reached 

after diligent effort, 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 in 

the matter may execute the oath or 

declaration under § 1.63. A party who 

shows sufficient proprietary interest in 

the matter executes the oath or 

declaration on behalf of the nonsigning 

inventor. 

(b) If a joint inventor or legal 

representative thereof (§ 1.42) refuses to 

execute the oath or declaration under 

§ 1.63 or cannot be found or reached 

after diligent effort, the remaining 

inventor(s) may execute the oath or 

declaration under § 1.63 on behalf of 

himself or herself and the nonsigning 

inventor. 

(c) Any oath or declaration executed 

pursuant to this section must comply 

with the requirements of § 1.63(a) and 

(b) and be accompanied by a petition 

that: 

(1) Includes the fee set forth in 

§ 1.17(g); 

(2) Identifies the nonsigning inventor, 

and includes the last known address of 

the nonsigning inventor; 

(3) States either the inventor or legal 

representative cannot be reached after a 

diligent effort was made, or has refused 

to execute the oath or declaration under 

§ 1.63 when presented with a copy of 

the application papers, with proof of the 

pertinent facts; and 

(4) For a party to whom the 

nonsigning inventor is under an 

obligation to assign the invention, or has 

sufficient proprietary interest in the 

matter acting under paragraph (a) of this 

section, a showing, including proof of 

pertinent facts, either that: 

(i) The nonsigning inventor is under 

an obligation to assign the invention to 

the party; or 

(ii) The party has sufficient 

proprietary interest in the matter to 

execute the oath or declaration pursuant 

to § 1.63 on behalf of the nonsigning 

inventor and that such action is 

necessary to preserve the rights of the 

parties. 

(d) The Office will publish notice of 

the filing of the application in the 

Official Gazette, and may send notice of 

filing of the application to the 

nonsigning inventor at the address(es) 

provided in the petition under this 

section. The Office may dispense with 

this notice provision in a continuing 

application, if notice regarding the filing 

of the prior application was given to the 

nonsigning inventor(s). 

(e) A nonsigning inventor or legal 

representative may subsequently join in 

the application by submitting an oath or 

declaration under § 1.63. The 

submission of an oath or declaration by 

a nonsigning inventor or legal 

representative after the grant of a 

petition under this section will not 

permit the nonsigning inventor or legal 

representative to revoke or grant a 

power of attorney. 

11. Section 1.48 is amended by 

revising the section heading and adding 

new paragraph (k) to read as follows: 

§ 1.48 Correction of inventorship in a 

patent application, other than a reissue 

application. 

* * * * * 

(k) National stage application under 

35 U.S.C. 371. The procedure set forth 

in paragraph (a) of this section for 

correcting an error in inventorship is 

also applicable to international 

applications entering the national stage 

under 35 U.S.C. 371 prior to becoming 

nonprovisional applications (§ 1.9(a)(3)), 

and to correct an error in the inventive 

entity set forth in an executed 

declaration submitted under PCT Rule 

4.17(iv). 

12. Section 1.53 is amended by 

revising paragraph (f)(4) to read as 

follows: 

§ 1.53 Application number, filing date, and 

completion of application. 

* * * * * 

(f) * * * 

(4) This paragraph applies to 

continuation or divisional applications 


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under paragraphs (b) or (d) of this 

section and to continuation-in-part 

applications under paragraph (b) of this 

section. See § 1.63(d) concerning the 

submission of a copy of the oath or 

declaration from the prior application 

for a continuing application under 

paragraph (b) of this section. 

* * * * * 

13. Section 1.55 is amended by 

revising the introductory text of 

paragraph (a)(1)(i), the introductory text 

of paragraph (c), and paragraph (d)(1)(ii) 

to read as follows: 

§ 1.55 Claim for foreign priority. 

(a) * * * 

(1)(i) In an original application filed 

under 35 U.S.C. 111(a), the claim for 

priority must be presented in an 

application data sheet (§ 1.76(b)(6)) or a 

supplemental application data sheet 

(§ 1.76(c)) during the pendency of the 

application, and within the later of four 

months from the actual filing date of the 

application or sixteen months from the 

filing date of the prior foreign 

application. This time period is not 

extendable. The claim must identify the 

foreign application for which priority is 

claimed, as well as any foreign 

application for the same subject matter 

and having a filing date before that of 

the application for which priority is 

claimed, by specifying the application 

number, country (or intellectual 

property authority), day, month, and 

year of its filing. The time periods in 

this paragraph do not apply in an 

application under 35 U.S.C. 111(a) if the 

application is: 

* * * * * 

(c) Unless such claim is accepted in 

accordance with the provisions of this 

paragraph, any claim for priority under 

35 U.S.C. 119(a)–(d) or 365(a) not 

presented in an application data sheet 

(§ 1.76(b)(6)) or a supplemental 

application data sheet (§ 1.76(c)) within 

the time period provided by paragraph 

(a) of this section is considered to have 

been waived. If a claim for priority 

under 35 U.S.C. 119(a)–(d) or 365(a) is 

presented after the time period provided 

by paragraph (a) of this section, the 

claim may be accepted if the claim 

identifying the prior foreign application 

by specifying its application number, 

country (or intellectual property 

authority), and the day, month, and year 

of its filing was unintentionally delayed. 

A petition to accept a delayed claim for 

priority under 35 U.S.C. 119(a)–(d) or 

365(a) must be accompanied by: 

* * * * * 

(d)(1) * * * 

(ii) The foreign application is 

identified in an application data sheet 

(§ 1.76(b)(6)) or a supplemental 

application data sheet (§ 1.76(c)); and 

* * * * * 

14. Section 1.63 is revised to read as 

follows: 

§ 1.63 Oath or declaration. 

(a) A nonprovisional application for 

patent filed under 35 U.S.C. 111(a) or 

which entered the national stage under 

35 U.S.C. 371 shall include, or be 

amended to include, an oath or 

declaration. The oath or declaration 

under this section must: 

(1) Be executed (i.e., signed) in 

accordance with either § 1.66 or § 1.68; 

(2) Identify each inventor by his or 

her full name without any abbreviation 

(except for a middle initial); 

(3) Identify the application to which 

it is directed; 

(4) Include a statement that the person 

executing the oath or declaration 

believes the named inventor or joint 

inventors to be the original inventor or 

original joint inventors of the claimed 

invention in the application for which 

the oath or declaration is being 

submitted; 

(5) State that the application was 

made or was authorized to be made by 

the inventor; 

(6) State that the person making the 

oath or declaration has reviewed and 

understands the contents of the 

application for which the oath or 

declaration is being submitted, 

including the claims, as amended by 

any amendment specifically referred to 

in the oath or declaration; and 

(7) State that the person making the 

oath or declaration acknowledges the 

duty to disclose to the Office all 

information known to the person to be 

material to patentability as defined in 

§ 1.56. 

(b) Unless such information is 

supplied on an application data sheet in 

accordance with § 1.76, the oath or 

declaration must also identify for each 

inventor a mailing address where the 

inventor customarily receives mail, and 

residence, if the inventor lives at a 

location different from the mailing 

address. 

(c)(1) An assignment may also include 

the oath or declaration required by this 

section if: 

(i) The assignment contains the 

information and statements required 

under paragraphs (a) and (b) of this 

section; and 

(ii) A copy of the assignment is filed 

in the application and recorded as 

provided for in part 3 of this chapter. 

(2) Any reference to an oath or 

declaration under § 1.63 includes an 

assignment as provided for in this 

paragraph. 

(d)(1) A newly executed inventor oath 

or declaration under § 1.63 is not 

required under § 1.51(b)(2) and § 1.53(f) 

or § 1.497(a) in an application that 

claims the benefit under 35 U.S.C. 120, 

121, or 365(c) in compliance with § 1.78 

of an earlier-filed application, provided 

that: 

(i) An executed oath or declaration in 

compliance with this section was filed 

in the earlier-filed application; 

(ii) A copy of such oath or 

declaration, showing the signature or an 

indication thereon that it was executed, 

is submitted in the continuing 

application; and 

(iii) Any new inventors named in the 

continuing application provide an 

executed oath or declaration in 

compliance with this section. 

(2) If applicable, the copy of the 

executed oath or declaration submitted 

under this paragraph must be 

accompanied by a statement signed 

pursuant to § 1.33(b) requesting the 

deletion of the name or names of the 

person or persons who are not inventors 

in the continuing application. 

(3) If the earlier-filed application has 

been accorded status via a petition 

under § 1.42 or § 1.47, the copy of the 

executed oath or declaration must be 

accompanied by a copy of the decision 

granting the petition in the earlier-filed 

application, unless all inventors or legal 

representatives subsequently joined in 

the earlier-filed application. If one or 

more nonsigning inventor(s) or legal 

representative(s) subsequently joined in 

the earlier-filed application, the copy of 

the executed oath or declaration must be 

accompanied by a copy of the executed 

oath or declaration filed by the inventor 

or legal representative to join in the 

application. 

(e) An oath or declaration filed at any 

time pursuant to 35 U.S.C. 115(h)(1) 

will be placed in the file record of the 

application or patent, but may not be 

reviewed by the Office. Any request for 

correction of the named inventorship 

must comply with § 1.48 in an 

application and § 1.324 in a patent. 

15. Section 1.64 is amended by 

revising paragraph (b) to read as follows: 

§ 1.64 Person making oath or declaration. 

* * * * * 

(b) If the person making the oath or 

declaration or any supplemental oath or 

declaration is not the inventor (§§ 1.42, 

1.47, or 1.67), the oath or declaration 

shall state the relationship of the person 

to the inventor, and, upon information 

and belief, the facts which the inventor 

is required to state. If the person signing 

the oath or declaration is the legal 

representative of a deceased or legally 

incapacitated inventor, the oath or 


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declaration shall also state that the 

person is a legal representative and, 

unless such information is supplied on 

an application data sheet in accordance 

with § 1.76, the residence and mailing 

address of the legal representative. 

16. Section 1.67 is revised to read as 

follows: 

§ 1.67 Noncompliant oath or declaration. 

(a) Where an oath or declaration does 

not comply with a requirement of 35 

U.S.C. 115, or a requirement of § 1.63 or 

1.162, the Office may require, or the 

inventors and applicants may submit, 

an oath or declaration meeting the 

requirements of § 1.63 or § 1.162 to 

correct any deficiencies or inaccuracies 

present in the earlier-filed oath or 

declaration. 

(1) Deficiencies or inaccuracies 

relating to all the inventors or 

applicants (§ 1.42 or § 1.47) may be 

corrected with an oath or declaration in 

compliance with 35 U.S.C. 115 and 

§ 1.63 or 1.162 signed by all the 

inventors or applicants. 

(2) Deficiencies or inaccuracies 

relating to fewer than all of the 

inventor(s) or applicant(s) (§ 1.42 or 

§ 1.47) may be corrected with an oath or 

declaration in compliance with 35 

U.S.C. 115 and § 1.63 or 1.162 

identifying the entire inventive entity 

but signed only by the inventor(s) or 

applicant(s) to whom the error or 

deficiency relates. 

(3) Deficiencies or inaccuracies due to 

the failure to meet the requirements of 

§ 1.63(b) in an oath or declaration may 

be corrected with a supplemental 

application data sheet in accordance 

with § 1.76. 

(b) No new matter may be introduced 

into a nonprovisional application after 

its filing date, even if an oath or 

declaration is filed to correct 

deficiencies or inaccuracies present in 

the earlier-filed oath or declaration. 

17. Section 1.76 is amended by 

revising paragraphs (a), (c), and (d)(1) to 

read as follows: 

§ 1.76 Application data sheet. 

(a) Application data sheet: An 

application data sheet is a sheet or 

sheets, that may be submitted in a 

provisional application, a 

nonprovisional application, or an 

international application entering the 

national stage under 35 U.S.C. 371, and 

must be submitted to claim priority to 

or the benefit of a prior-filed application 

under 35 U.S.C. 119, 120, 121, or 365. 

An application data sheet contains 

bibliographic data, arranged in a format 

specified by the Office. An application 

data sheet must be titled ‘‘Application 

Data Sheet’’ and must contain all of the 

section headings listed in paragraph (b) 

of this section, with any appropriate 

data for each section heading. If an 

application data sheet is provided, the 

application data sheet is part of the 

provisional or nonprovisional 

application for which it has been 

submitted. 

* * * * * 

(c) Supplemental application data 

sheets. Supplemental application data 

sheets: 

(1) May be supplied only after filing 

of the application, regardless of whether 

an application data sheet under 

paragraph (a) of this section was 

submitted on filing, and until payment 

of the issue fee, either to correct or 

update information in a previously 

submitted application data sheet, or an 

oath or declaration under § 1.63 or 

§ 1.67, except that inventorship changes 

are governed by § 1.48, and 

correspondence changes are governed 

by § 1.33(a); and 

(2) Must be titled ‘‘Supplemental 

Application Data Sheet,’’ include all of 

the section headings listed in paragraph 

(b) of this section, include all 

appropriate data for each section 

heading, be signed in accordance with 

§ 1.33(b), and identify the information 

that is being changed, with underlining 

for insertions of text, and strike-through 

or brackets for deletions of text. 

(d) * * * 

(1) The most recent submission will 

govern with respect to inconsistencies 

as between the information provided in 

an application data sheet, an 

amendment to the specification, a 

designation of a correspondence 

address, or by a § 1.63 or § 1.67 oath or 

declaration, except that the most recent 

oath or declaration (§ 1.63 or § 1.67) will 

govern with respect to the naming of 

inventors (§ 1.41(a)(1)), and that the 

most recent application data sheet will 

govern with respect to foreign priority 

(§ 1.55) or domestic benefit (§ 1.78) 

claims; 

* * * * * 

18. Section 1.78 is amended by 

revising paragraphs (a)(2)(iii) and 

(a)(5)(iii) to read as follows: 

§ 1.78 Claiming benefit of earlier filing date 

and cross-references to other applications. 

(a) * * * 

(2) * * * 

(iii) If the later-filed application is a 

nonprovisional application, the 

reference required by this paragraph 

must be included in an application data 

sheet (§ 1.76(b)(5)) or a supplemental 

application data sheet (§ 1.76(c)). 

* * * * * 

(5) * * * 

(iii) If the later-filed application is a 

nonprovisional application, the 

reference required by this paragraph 

must be included in an application data 

sheet (§ 1.76(b)(5)) or a supplemental 

application data sheet (§ 1.76(c)). 

* * * * * 

19. Section 1.172 is revised to read as 

follows: 

§ 1.172 Applicants. 

(a) A reissue applicant must submit 

an oath or declaration accompanied by 

the written consent of all assignees, if 

any, owning an undivided interest in 

the patent. 

(b) Oath or declaration: 

(1) Nonbroadening reissues: If the 

application does not seek to enlarge the 

scope of the claims of the original 

patent, the oath or declaration must be 

signed by: 

(i) The inventor or inventors, 

including the legal representatives of 

deceased or legally incapacitated 

inventors or a § 1.47 applicant for a 

nonsigning inventor; 

(ii) An assignee of the entire interest; 

or 

(iii) All partial assignees together with 

all inventors who have not assigned 

their rights, including the legal 

representatives of deceased or legally 

incapacitated inventors or a § 1.47 

applicant for a nonsigning inventor. 

(2) Broadening reissues: If the 

applicant seeks to enlarge the scope of 

the claims of the original patent, the 

oath or declaration must be signed by: 

(i) The inventor or inventors, 

including the legal representatives of 

deceased or legally incapacitated 

inventors or a § 1.47 applicant for a 

nonsigning inventor; or 

(ii) For a reissue application filed on 

or after September 16, 2012, the 

assignee of the entire interest where the 

application for the original patent was 

filed by the assignee of the entire 

interest (i.e., the oath or declaration was 

executed by the assignee under § 1.42 or 

§ 1.47). 

(c) Assignee ownership: All assignees 

consenting to the reissue must establish 

their ownership in the patent by filing 

in the reissue application a submission 

in accordance with the provisions of 

§ 3.73(b). 

(d) A reissue will be granted to the 

original patentee, his legal 

representatives or assigns as the interest 

may appear. 

20. Section 1.175 is amended by 

revising paragraphs (a), (b), (c), and (e), 

and adding paragraph (f), to read as 

follows: 

§ 1.175 Reissue oath or declaration. 

(a) The reissue oath or declaration, in 

addition to complying with the 


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requirements of § 1.63, must also 

specifically identify at least one error 

pursuant to 35 U.S.C. 251 being relied 

upon as the basis for reissue and state 

that the applicant believes the original 

patent to be wholly or partly inoperative 

or invalid by reason of each one of the 

following reasons that are applicable: 

(1) A defective specification or 

drawing; 

(2) The patentee claiming more than 

the patentee had the right to claim in 

the patent; or 

(3) The patentee claiming less than 

the patentee had the right to claim in 

the patent and identify a broadened 

claim and a broadened portion of the 

specification if a change thereto is the 

basis for the claim broadening; 

(b) A claim broadened in any respect 

must be treated and identified as a 

broadened claim pursuant to paragraph 

(a)(3) of this section. 

(c) Where all errors previously 

identified in the reissue oath or 

declaration pursuant to paragraph (a) of 

this section are no longer being relied 

upon as the basis for reissue, a new 

error currently being relied upon as the 

basis for reissue must be identified in a 

reissue oath or declaration under this 

section, which statement need only 

address the new error. 

* * * * * 

(e) Continuing reissue applications: 

(1) Where a continuing reissue 

application replaces a prior reissue 

application, the requirement for a 

reissue oath or declaration pursuant to 

§ 1.172 may be satisfied by a copy of the 

reissue oath or declaration from the 

prior reissue application it replaces. 

(2) Where a continuing reissue 

application does not replace a prior 

reissue application, the requirement for 

a reissue oath or declaration pursuant to 

§ 1.172 may be satisfied by: 

(i) A newly executed reissue oath or 

declaration that identifies at least one 

error in the original patent which has 

not been corrected by a prior reissue 

application; or 

(ii) A copy of the reissue oath or 

declaration from a prior reissue 

application within the chain of the 

benefit claim, accompanied by a 

statement that explains either that an 

identified error was not corrected in a 

prior reissue application, or how an 

identified error is currently being 

corrected in a manner different than in 

a prior reissue application. 

(f) A reissue oath or declaration filed 

at any time pursuant to 35 U.S.C. 

115(h)(1) will be placed in the file 

record of the reissue application, but 

may not be reviewed by the Office. 

21. Section 1.311 is amended by 

adding new paragraph (c) to read as 

follows: 

§ 1.311 Notice of allowance. 

* * * * * 

(c) Where an assignee, person to 

whom the inventor is under an 

obligation to assign the invention, or 

person who otherwise shows sufficient 

proprietary interest in the matter has 

filed an application under §§ 1.42, or 

1.47, the applicant must notify the 

Office of any change in ownership of the 

application no later than payment of the 

issue fee. The Office will treat the 

absence of such a notice as an 

indication that there has been no change 

in ownership of the application. 

22. Section 1.497 is revised to read as 

follows: 

§ 1.497 Oath or declaration under 35 

U.S.C. 371(c)(4). 

(a) When an applicant of an 

international application desires to 

enter the national stage under 35 U.S.C. 

371 pursuant to § 1.495, and a 

declaration in compliance with this 

section has not been previously 

submitted in the international 

application under PCT Rule 4.17(iv) 

within the time limits provided for in 

PCT Rule 26ter.1, the applicant must 

file an oath or declaration in accordance 

with § 1.63. 

(b) An oath or declaration will be 

accepted as complying with 35 U.S.C. 

371(c)(4) and § 1.495(c) for purposes of 

entering the national stage under 35 

U.S.C. 371 if it: 

(1) Is executed in accordance with 

either §§ 1.66 or 1.68; 

(2) Identifies the application to which 

it is directed; 

(3) Identifies each inventor; 

(4) States that the person executing 

the oath or declaration believes the 

named inventor or inventors to be the 

original inventor or an original joint 

inventor of a claimed invention in the 

application; 

(5) States that the application was 

made or was authorized to be made by 

the inventor; and 

(6) Where the oath or declaration is 

not made by the inventor, complies with 

the applicable requirements of §§ 1.42 

and 1.47. 

(c) If the oath or declaration meeting 

the requirements of § 1.497(b) does not 

also meet the requirements of § 1.63, an 

oath or declaration in compliance with 

§ 1.63 or a supplemental application 

data sheet will be required in 

accordance with § 1.67. 

PART 3—ASSIGNMENT, RECORDING 

AND RIGHTS OF ASSIGNEE 

23. The authority citation for part 3 

continues to read as follows: 

Authority: 15 U.S.C. 1123; 35 U.S.C. 

2(b)(2). 

24. Section 3.31 is amended by 

adding new paragraph (h) to read as 

follows: 

§ 3.31 Cover sheet content. 

* * * * * 

(h) The assignment cover sheet 

required by § 3.28 must contain a 

conspicuous indication of an intent to 

utilize the assignment as the required 

oath or declaration under § 1.63 of this 

chapter. 

25. Section 3.71 is amended by 

revising paragraph (a) to read as follows: 

§ 3.71 Prosecution by assignee. 

(a) Patents—conducting of 

prosecution on behalf of assignee. 

Subject to the requirements of §§ 1.31 

and 1.33(f), one or more assignees as 

defined in paragraph (b) of this section 

may, after becoming of record pursuant 

to paragraph (c) of this section, conduct 

prosecution of a national patent 

application or a reexamination 

proceeding to the exclusion of either the 

inventive entity or the assignee(s) 

previously entitled to conduct 

prosecution. Conflicts between 

purported assignees are handled in 

accordance with § 3.73(c)(4). 

* * * * * 

26. Section 3.73 is amended by 

revising the section heading, paragraphs 

(b)(2)(ii) and (c)(2), and adding new 

(b)(2)(iii), (b)(3), (c)(3) and (c)(4) to read 

as follows: 

§ 3.73 Establishing right of assignee to 

request or take action in a trademark or 

patent matter. 

* * * * * 

(b) * * * 

(2) * * * 

(ii) Being signed by a person having 

apparent authority to sign on behalf of 

the assignee; or 

(iii) Being signed by a patent 

practitioner of record pursuant to § 1.32 

of this chapter. 

(3) In any one application or 

proceeding, a subsequent statement 

must provide a complete chain of title. 

(c) * * * 

(2) If the submission is by an assignee 

of less than the entire right, title, and 

interest (e.g., more than one assignee 

exists), the Office may refuse to accept 

the submission as an establishment of 

ownership unless: 

(i) Each assignee establishes the 

extent (by percentage) of its ownership 


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interest, so as to account for the entire 

right, title, and interest in the 

application or patent by all parties 

including inventors; or 

(ii) Each assignee submits a statement 

identifying the parties including 

inventors who together own the entire 

right, title, and interest and stating that 

all the identified parties own the entire 

right, title, and interest. 

(3) A statement under paragraph (b) of 

this section 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 have been 

deleted in the continuing application, 

and a copy of the statement under 

paragraph (b) of this section from the 

prior application is filed in the 

continuing application. 

(4) Where two or more purported 

assignees file conflicting statements 

under paragraph (b) of this section, the 

Director will determine which, if any, 

purported assignee will be permitted to 

control prosecution of the application. 

Dated: December 30, 2011. 

David J. Kappos, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2011–33815 Filed 1–5–12; 8:45 am] 

BILLING CODE 3510–16–P 


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