by Dennis Crouch
The new rules on inventor oaths make practical business sense, but they leave me somewhat pessimistic. Metaphysically, the rules serve to crystallize the the US patent system's shift in focus away from inventors and toward corporate owners (and other non-human juristic entities). Up to now, corporations were never considered patent applicants. Rather, inventors were the applicants. Even when the ultimate rights were owned by a corporate entity, the USPTO still focused on the inventors as the patent applicants. Under the new rules being implemented on September 16, 2012, the status of “patent applicant” will no longer be keyed to inventorship but instead ownership. Thus, any juristic entity who can show a proprietary interest will be permitted to file and prosecute a patent application as the patent applicant. Of course, this change makes a fool of the first-inventor-to-file label given to the new US priority system during the political debates. Rather, the system truly is the first-owner-to-file. However, the change does fit within the same mental construct as the shift to a first-to-file system that largely turns a blind eye to inventive activities and instead focuses on paperwork (the essence of a corporate entity). In recent years, we have seen a steady decrease in the percentage of inventor-owned patents. For better or worse, there is no reason to believe that trend will change any time soon.
On a practical level, the change to the oath requirement itself is fairly narrow and will not ordinarily arise. Under the new rules, the inventor will still ordinarily submit an oath or declaration of inventorship unless the inventors are unavailable or refuse. However, there are two major important changes: (1) a right-holding entity may file the patent application and wait to file the inventor's oath until the time that the application is otherwise in condition for allowance; and (2) defects in the listing of inventors can now (apparently) be corrected even if the original filing was done with deceptive intent. These changes relieve some headache for corporate patent attorneys. However, I believe that this streamlined process does increase the likelihood that unscrupulous entities will overreach.
One “cure” for this potential problem is that the Office will now require all juristic entities (non-people) prosecuting applications to do so via a registered patent practitioner. “Thus, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner…” Obviously, this is a boon for US patent attorneys and patent agents. It will create some struggle for very small corporate entities that continue to file applications pro se. However, my understanding of the rules is that the requirement to use a patent attorney/agent only exists if the juristic entity files as the applicant. To avoid the requirement, the application could still be filed in the name of the actual inventors who retain the option of prosecuting the application pro se.