AIA Practice Tips: Using New Inventor Declaration Forms

The following is a guest post from Carl Oppedahl. Oppedahl is the founder of his self-named, Colorado-based patent law firm. www.oppedahl.com

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On August 14, 2012, USPTO published its new Rules relating to the Oath and Declaration of the inventor. These Rules take effect on Sunday, September 16, 2012 and it is not much of an exaggeration to say that they change everything about the Oath and Declaration of the inventor. USPTO has also posted several new forms on its web site, forms which will be usable starting on September 16, 2012. In this guest post I will talk about two particular forms and the ways that they will make a big difference in your daily patent practice.

We are all familiar with Form PTO/SB/01 and Form PTO/SB/01A, which I call the "long form" declaration and the "short form" declaration. These two forms are to be used for any patent application filed before September 16, 2012. They contain the "magic words" that are required for a declaration that is used in an application filed before September 16, 2012. I call these "old" declarations. When I say an "old" application I mean an application filed before September 16, 2012.

The long form declaration contains all of the bibliographic data, for example the foreign priority information, the mailing address of the inventors, and lots of other things. The short form declaration contains the bare minimum of information and "magic words" permitted by the Statute and the Rules for an "old" application.

This leads us to one of the very big changes in the new Rules. For a new patent application filed on or after September 16, 2012 (which I call a "new" application), the "magic words" and the information content for a declaration are different than before. The new form is PTO/AIA/01. I call this the "new" declaration.

Here is one of the important things to know. If your application is a "new" application, then the declaration has to be a "new" declaration. If your application is an "old" application, then the declaration has to be an "old" declaration.

We all know that under 35 USC § 363, a PCT application designating the United States is a US patent application. This means that if your application is a US national phase of a PCT application, then the way you know whether it is "new" or "old" is by looking at the international filing date.

If you are getting ready to send a blank declaration to an inventor for signature, you need to send the correct one ("old" or "new") depending on the filing date of the application. If you already have a signed declaration in hand and you are thinking about sending it to the USPTO, you need to look at it to see if it is "old" or "new" If it is the wrong kind, then you need to prepare one of the correct kind and get it signed.

Go to the web site of the USPTO and print out the "old" and "new" declarations. What you will see is summarized in this table:

Filing date of application

Before September 16, 2012

On or after September 16, 2012

How many inventor documents are filed?

One declaration with N signatures lines, one signature line for each inventor

One form for each inventor, each with one signature line and one signature

Does the declaration take a position on who the other inventors are?

Yes

No

How many "magic words"?

203

90

Form

PTO/SB/01A

PTO/AIA/01

Citizenship stated in form?

Yes

No

When an inventor cannot be found or refuses to sign?

Rule 47 practice

Form PTO/AIA/02 ("Substitute Statement")

One of the first things you will see is that the new declaration has no place to list any inventors other than the particular inventor who is signing the declaration. Instead, it turns out that the way the USPTO learns who the inventors are in a particular case is by means of an Application Data Sheet.

For an old application, there will be a single declaration form, with places for as many signatures as there are inventors. Each inventor is taking a position as to who the other inventors are. In contrast, for a new application, there are as many declaration forms (Form PTO/AIA/01) as there are inventors, each having only a single signature line for that inventor.

Another thing you will see is that the "magic words" count is far smaller for a new declaration compared with an old one. The magic word count is 90 compared with 203.

The new declaration does not aver that the signer has reviewed and understood the application including the claims. And it does not acknowledge the duty of disclosure. But the new Rules state that anyone signing a declaration must have reviewed and understood the application including the claims. And the new Rules state that the signer must be aware of the duty of disclosure. So you will need to do whatever it takes to ensure that these requirements are satisfied for anyone signing a new declaration.

What happens if an inventor cannot be found or refuses to sign the declaration?

For an old application, the answer is of course the well-known Rule 47 procedure. You assemble one or more statements signed by various persons having knowledge of the pertinent facts, you prepare a Petition, you pay a fee, and then you wait to find out what the USPTO thinks about your papers. Maybe the USPTO grants the Petition, maybe the USPTO asks for more statements or more detailed statements. I've heard stories from practitioners who had to go around as many as three times with the USPTO before the USPTO would grant the Petition.

For a new application, it's all different. You simply fill out Form PTO/AIA/02 and send it in. No fee, no statements, no petition. This form all by itself replaces the inventor's declaration. So for example if you have seven inventors, and two of them refuse to sign and another cannot be found, then you will hand in three Forms PTO/AIA/02, and four signed Forms PTO/AIA/01, and an Application Data Sheet, and Bob's your uncle.

So for some categories of inventor signature problem, the legacy Rule 47 procedure is a thing of the past. Anyone who has suffered through a difficult Rule 47 Petition in the past will be delighted at this change.

Which gets us to the Application Data Sheet (ADS). The ADS with which many of us are familiar is Form PTO/SB/14 ( /media/docs/2012/08/sb0014.pdf ). It is a Best Practice to use this form (which is computer-readable) because it can auto-load its bibliographic data directly into EFS-Web and from there into Palm. This eliminates several possible sources of error when compared with an approach in which USPTO personnel hand-key such information into Palm.

Under the new Rules, the use of a ADS is mandatory except under a small handful of rare fact situations. So you might as well get used to preparing and filing ADSs.

Within the next week or two, USPTO will post the "new" application data sheet for use with "new" patent applications. When this ADS becomes available, it will likewise be a Best Practice to use it, and to e-file it so that it too may auto-load into Palm. The key is to include the computer-readable ADS in the first e-filing submission for a particular patent application. Only then will it auto-load into Palm.

After you have carried out the e-filing submission that contains the ADS (the first e-filing submission for a particular patent application), be sure to open the application in Private PAIR and click on the Publication Review page. You can proofread this page and you can check all of the bibliographic data for accuracy. In the event of some error or omission, you can get started right away on getting it fixed even before the Filing Receipt gets mailed.

Well, there we are. I've told you about one-twentieth of the things that are completely different as a result of USPTO's new rules relating to the oath and declaration. For the rest, you can read the new Rules (/media/docs/2012/08/fr_inventor_oath.pdf ).

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Carl Oppedahl will present a webinar (brochure) about the new Rules on Oath and Declaration on August 30, 2012. Carl has made this posting available as an Epub file which you could load into a Nook or any other Epub reader.

© OPLF 2012

48 thoughts on “AIA Practice Tips: Using New Inventor Declaration Forms

  1. Can we (law firm) simply file a General POA (from Assignee as sole Applicant) at initial filing without providing further detailed information? I see reference to submitting a transmittal letter, but no clear information.

  2. Does anyone have an answer to whether a copy of the declaration from the parent can be used or if a new declaration will be needed. In the Final Rules in the Fed Reg, looking at comment 15, it looks like a copy from the parent is sufficient. Looking at comment 18, it looks like a copy from the parent is not sufficient.

  3. The plain words of new section 115 clearly supports your position:

    “An application for patent that is filed under section 111(a) or commences teh national stage under section 371 shall include . . .”

    BLOG POST IS INCORRECT!

  4. Anyone know what form(s) to use for cons, CIPs, and divisionals filed after 9/16 … where the parent was filed prior to 9/16?

  5. Is Deceased: This means they can wack the inventor and steal his invention? What about his estate I think this is where inventor conciever security comes in that should read if the inventor died under suspicious circumstances none of the other inventors or anyone can profit from the invention

  6. So basicaly all there doing with all this is making it legal to corruptly hide the alleged conciever from the application for non prosecution purposes legalizing espionage and creating alleged signoffs or signoffs under legalized duress of inventors ownership rights with no limitations of what they can allege.

  7. The post seems to indicate that a PCT application entering the US national stage will require the “new” declaration if the international filing date is September 16, 2012 or later. My understanding is that the “new” declaration will be required for PCT applications entering the US after September 16, 2012. Is anyone in a position to confirm? Also, although the post does not discuss in detail the ability to file Declarations up to the Notice of Allowance, that will not be advisable for PCT applications due to loss of patent term and possible delays in issuing the first Office Action.

  8. Thank You, I really did not know this history about Dr. Tafas. But what he has to say about the big companies rigging the patent system for their benefit is quite true. Take a look at the thread on NPEs, just for a current example. The big companies are banging the war drums incessantly trying to defang US patents primarily because the only people who really rely on them (other than drug and chemical companies) are the small fry who may or may not make it, and if they do not make it, have nothing left but patents to justify investors’ investment. But who are these small fry? They are potential market replacements for their products:

    Once upon a time, mainframes were de rigueur. Then along came Intel who placed computers on a chip and spawned companies like Apple Computer. Where are mainframes today. Nowhere.

    Think phones. Once there were only land lines. Then we got cell phones.

    Think cars. Once there were only railroads. Then we got autos.

    And the beat goes one. The big companies want to prevent competition and replacement technologies. In order to do this, their main enemy is a strong patent system. Ergo, we got eBay and the AIA with its post-grant oppositions and patent invalidity trials in the PTO. Keep the small fry down is the watchword.

  9. It is common to use your own forms (many PTO forms are deficient for one reason or another). In your own form, you could provide space for several inventors. As National Enquirer suggests above, you could also retain the Rule 56 acknowledgment as well (but why declare anything that you need not declare?). You can even modify a PTO form, but you have to remove the form numbers from the upper margin. I don’t see any indication that the longstanding option to use your own forms will be lost.

  10. Is the PTO form required or may we create our own form?

    If so, is it acceptable to list signature lines for multiple inventors on consecutive lines?

    I would prefer not to deal with multiple copies of the declaration.

  11. anon, under the law, a co-inventor has a right to file on behalf of a non-signing joint inventor.  He does not sign claiming any proprietary interest in the joint inventor's rights.  See, Rule 1.45 and 35 USC 116.

    I think we all need to keep a substitute state based on an assignment or obligation to assign separate from the right of a co-inventor to file.  The two have independent statutory basis and governing rules.

  12. SBYGS:

    Trains were a very important mode of transportation in the 19th century, and although their importance has diminished with the rise of the automobile, they remain an important method of conveyence for masses of people.

  13. I think proprietary interest had to be with respect to that inventor’s rights.

    I see where you might be deriving this Ned, but I don’t see the supporting rationale, quite in fact, the opposite rationale of enabling a related party (with proprietary interest and as noted not necessarily ownership interests) to proceed when an inventor is unable or unwilling to join guides the new law.

  14. OT, but an important reminder:

    Although such Final Rules were widely criticized by most companies in the United States, a sole individual, Dr. Triantafyllos Tafas, a co-inventor of a computerized automated microscope, stood alone against the Rules package for nearly three months against the might of the USPTO. Dr. Tafas filed suit because he truly believed the U.S. patent system was being manipulated by a few large entities to the significant detriment of research-intensive entities such as emerging companies, universities, and research institutes, particularly those in the chemical, bioengineering, pharmaceutical, and biotech fields. Dr. Tafas’ beliefs grew from his experience attempting to start his company in Europe where he found few investors willing to invest in small companies whose only major asset was a patent portfolio. However, he found investors in the U.S. to be much more respectful of U.S. patents and willing to invest in companies with a good patent portfolio, irrespective of whether they were owned by a large multinational or the new kid on the block. This cemented Dr. Tafas’ belief in the importance of the U.S. patent system.

    from: link to ipwatchdog.com

  15. Many firms make up their own combined declaration/POA forms; I don’t think anything precludes the inclusion of “I-have-read-this-application-and-am-aware-of-my-duty-to-disclose”-type language in such a form. It’s easier than sending a separate CYA letter to be signed by the inventors.

  16. Ned.

    I am just curious as to why once again you are derailing the conversation by attempting to bring in validity?

  17. Sitanswer, I’m not so sure you are right. Quote the portion of the rule or history that supports your view.

    Right about what? That “ownership” is not the same as “sufficient proprietary interest”?

    Is that really the question you are asking for rules or history to clarify?

  18. Listen, Sit, I respectfully suggest you actually read the statutes and rules I quoted before you say such silly thing.

    1.45 applies to omitted joint inventors.  That was the topic of my conversation here.

    Now, I would ask you, Mr. Sit, of what value is a patent with a named joint inventor who has co-ownership of the patent, must join infringement actions, has to power to license infringers independently of you?  I  will tell you, Mr. Sit, it has the same value as a patent that has been dedicated to the public.

    Why bother?

    I think we need to determine whether a patent that does not name a co-inventor is valid.  If it is valid despite the omission, then I see a way forward for the inventors who what to spend the money to get a patent who value is totally destroyed by the wildcard inventor.

  19. Sit, I believe 116(b), and rules 1.45 and 1.64 apply.  A joint inventor may file on behalf of his non signing inventor and may sign a substitute statement.  

  20. It appears that the rule is 1.45. It refers to 1.64.

    On the new form, the filing inventor(s) signs a substitute statement indicating he is a joint inventor with the non signing inventor.

  21. 35 USC 116

    “(b) Omitted Inventor- If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.”

    It seems to me that the one inventor may file on behalf of himself and the other, recalcitrant inventor. If so, it seems, one should not need a substitute statement. The patent will issue to the one inventor alone, it appears.

    With respect to the above, what rules and what forms apply? Does anyone know?

  22. Anon, I read the rule to be consistent with the legislation that requires the recalcitrant inventor to be under some obligation to assign. I think proprietary interest had to be with respect to that inventor’s rights.

    If that other inventor flatly refuses to cooperate, the statute seems to suggest that the other inventors cannot override his opposition to filing.

    This is all consistent with the notion that one owner of a patent cannot file suit without the other owner’s consent. This makes sense, because if the other owner does not consent, he has essentially licensed the accused infinger.

  23. Sit, Legislation? Let read it.

    “(2) PERMITTED CIRCUMSTANCES- A substitute statement under paragraph (1) is permitted with respect to any individual who–
    (A) is unable to file the oath or declaration under subsection (a) because the individual–
    (i) is deceased;
    (ii) is under legal incapacity; or
    (iii) cannot be found or reached after diligent effort; or
    (B) is under an obligation to assign the invention but has refused to make the oath or declaration required under subsection (a).”

    Now, what you propose essentially reads out of the statute (B). Your read is that regardless of any obligation to assign, if he refuses to assign the other inventor may file the substitute oath.

    I see nothing in the rules or legislation that supports this reading. If you have it, please post it here.

  24. Ned,

    It does not make any sense whatsoever to read the rule as you are trying to.

    None.

    As to the difference between propietary interest and ownership, I agree with Sitanswer. If Congress wanted the law to read as ownership, they would have used that word. They did not.

  25. Sitanswer, I’m not so sure you are right. Quote the portion of the rule or history that supports your view.

    On the other hand, the rules also seem to make clear that one such a Rule 1.46 affidavit is filed, the named inventor can no longer intervene. How is that possible if the is a co-owner?

    What this suggests is that the proprietary interest we are talking about is the proprietary interest in ownership rights of the omitted inventor.

  26. To be more clear, you are over-reading the 1.46 rule and equating “owns the other inventor’s rights” with “sufficient propietary interest.”

    The two are not the same, as propietary interest includes partial interest, of which your client has.

  27. However, under the facts here, your client does not have any proprietary interest in the other inventor’s rights. None. Nada. Zilch.

    You are misreading the requirement.

    The requirement is for “sufficient proprietary interest in the matter.” The matter being the patent application that your client (the inventor that is willing to sign and has given you permission) is filing. The propietary interest is not at all concerned with whatever the other inventor chooses to do (or not do).

    You have not explained where this new found power to block comes from. If your view were accurate, the forms, if needed at all, would be vastly different. The legislative intent (not necesssary to go to since there is no ambiguity) is also clear that the change was to enable entities to step around unwilling inventors more easily. Your read is completely in the wrong direction and simply is not sustainable by ANY stretch of the imagination.

    Why do I feel like I just got trolled?

  28. The substitute statement can be filed by an “assignee” of the other inventor. Otherwise one must file a Rule 1.46 petition and lay out why you believe your client owns the other inventor’s rights.

    However, under the facts here, your client does not have any proprietary interest in the other inventor’s rights. None. Nada. Zilch.

    From my read, one can no longer even successful file an application with a non cooperating inventor. This represents a major shift from before where the named inventors are deemed to file on behalf of the non cooperation inventors.

    This seems right. I the co-inventor refuses to cooperate, he essentially has dedicated the invention to the public. A patent should not issue.

  29. Do you realize that your CYA question is not the same as the mapractice question?

    Can you explain how it is malpractice to not have a form that does not exist? Did you miss this question at 11:29 AM, or do you think that thinking about such a “thoughtless” thing as what actually constitutes malpractice might be too much effort?

  30. Is that right?

    No, and further, I do not see your problem.

    For a new application, it’s all different. You simply fill out Form PTO/AIA/02 and send it in. No fee, no statements, no petition

    You do not need to file the oath of the other inventor.

    In your own set-up you state that the other inventor refuses to sign.

    Use the substitute statement.
    Choose the option (Person who otherwise shows a sufficient proprietary interest in the matter), which is true as you do represent one of the two inventors.
    Choose the option (Inventor has refused to execute the oath or declaration under 37 CFR 1.63).
    Good to go.

    Why would you presume that the patent cannot issue?

  31. You’re right. You should never document the content of verbal conversations. What could possibly go wrong?

  32. Sitrep: Two inventors, neither obligated to assign. You represent one. The other refuses to sign. You file, name the other. You file the oath of your client. You cannot file an oath of the other inventor – ever. Any you know that going in.

    What happens? I presume the patent cannot issue. Is that right?

  33. Would it make you feel any better if I were to say that I expected a thoughtless post back from you?

    What exactly is “the information that YOU are liable for leaving out of the application”? Do you recognize the point in the post that there is NO leaving out what is not provided for putting in?

  34. I knew that would draw a thoughtless response. By having the client sign a document saying that they have read and understood the application, they can’t later say that there was information that YOU are liable for leaving out of the application because they had the opportunity to point that out at the time and didn’t. Like I said, it’s CYA.

  35. The new declaration does not aver that the signer has reviewed and understood the application including the claims. And it does not acknowledge the duty of disclosure. But the new Rules state that anyone signing a declaration must have reviewed and understood the application including the claims. And the new Rules state that the signer must be aware of the duty of disclosure. So you will need to do whatever it takes to ensure that these requirements are satisfied for anyone signing a new declaration.

    What does “So you will need to do whatever it takes to ensure that these requirements are satisfied” really mean? Without any official form, how is this to be done with any meaningful consistency? No requirement for anything is equivalent to nothing. Which is the level of effort this will see in reality.

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