Leahy-Smith America Invents ActEffects on PCT and U.S. National

Phase Practice

Michael NeasSupervisor

Office of PCT Legal Administration

Applicants for U.S. Patent Applications

• 35 U.S.C. 118 as amended by the AIA expands who may be an applicant– Inventors are no longer the only possible applicants– Applicants may be persons:

• To whom the inventor has assigned;• To whom the inventor is under an obligation to assign; and• Who otherwise shows proprietary interest in the matter.

– Applies to patent applications filed under 35 U.S.C. 111 or 363 on or after September 16, 2012

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Applicants for PCT Applications - International Phase (1)

• For international applications filed on/after September 16, 2012, an applicant for the purposes of the United States may be:– Inventor– Legal representative of deceased or legally incapacitated

inventor– Assignee– Obligated assignee– Person who otherwise shows proprietary interest

• Proof of proprietary interest will be required in the national phase

• Example: Inventor X assigns all rights in the invention to Assignee Y. Assignee Y may be indicated on the PCT Request form (Box II) as an applicant for “all designated States” and Inventor X indicated (in Box III) as “inventor only”

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Applicants for PCT Applications - International Phase (2)

• Change to Sec. 118 allowed the PCT Request Form to be simplified

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Applicants for PCT Applications - International Phase (3)

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Inventorship in §371 National Phase Applications (1)

• Inventorship in a §371 application having an international filing date on or after 9/16/2012 (§1.41(e)):– If a signed ADS is included with the initial §371 submission,

inventorship will be taken from the ADS– Otherwise, the inventorship will be that set forth in the

international phase (including any change effected under PCT Rule 92bis)

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Inventorship in §371 National Phase Applications (2)

– Procedure for correcting inventorship and/or an inventor’s name has been simplified:

• All corrections fall under §1.48 – §1.497(d) is removed for § 371s having an international

filing date on or after 9/16/2012

• Request under §1.48 need only include an ADS + processing fee (37 CFR 1.17(i))

– An inventor’s oath or declaration will be required for each actual inventor who has not yet executed such oath or declaration

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Applicants for §371 National Phase Applications (1)

• Applicants for §371 applications having an international filing date on or after 9/16/2012:– Unless changed in the national phase, the applicants

identified in the international phase as applicants for the U.S. will be considered to be the applicants for the §371 application (§ 1.46(b))

• For a person who otherwise shows sufficient proprietary interest in the matter, the applicant must submit a petition including

– The fee set forth in § 1.17(g) ($200);

– A showing that such person has sufficient proprietary interest; and

– A statement that making the application is appropriate to preserve the rights of the parties (§ 1.46(b)(2)).

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Applicants in §371 National Phase Applications (2)

• Correcting or updating the name of the applicant, or changing an applicant (§ 1.46(c)):– Must include an ADS specifying the change in the

applicant information section (§1.76(b)(7)), and for changes in the applicant comply with §§3.71 and 3.73

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Inventor’s Oath or Declaration (1)

• 35 U.S.C. 115 as amended by the AIA– Still requires that the inventors execute an oath or

declaration• Except as otherwise provided

– Changes the required statements• Now requires

– Statement that application was made by or authorized to be made by the affiant or declarant

– Statement that the individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention

• No longer requires– Statement of citizenship– Statement that the inventor believes himself or herself to be the “first”

inventor of the subject matter

– AIA-compliant inventor’s oath or declaration forms are available at http://www.uspto.gov/forms/aia_forms.jsp

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Inventor’s Oath or Declaration (2)

• Substitute statements (§ 1.64)– Can be submitted where the inventor is deceased, legally

incapacitated, cannot be found or reached after diligent effort, or refuses to execute

– No petition is required to execute the substitute statement

– Office has created a new PTO form for this purpose (PTO/AIA/02)

• Assignment may serve as the inventor’s oath or declaration if:– Executed by inventor and contains information/statements required

by § 1.63, and

– A copy of the assignment is recorded in the Office’s assignment database

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Timing of Inventor’s Oath or Declaration

• May postpone submission of inventor’s oath or declaration until the application is in condition for allowance if an ADS is filed identifying (§1.495(c)): – Each inventor by his or her legal name– A mailing address where the inventor customarily receives mail,

and residence, if the inventor lives at a location different than the mailing address, for each inventor

• A surcharge (§1.492(h)) is required for filing the inventor’s oath or declaration after commencement

• The inventor’s oath or declaration must be filed no later than the time period set in the “Notice of Allowability” to avoid abandonment

• “Filing or 371(c)” date on the Filing Receipt will no longer be based on date of receipt of oath/declaration

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Domestic Benefit Claims in §371 Applications

• Benefit claims under 35 U.S.C. 120, 365(c) and 119(e) must be in the ADS– Inclusion of such benefit claims in the first

sentence(s) of the specification will not comply with the new rules.

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Important Practice Tips (1)

• If naming a non-inventor applicant as applicant for “all designated States”– Review residence and nationality of the non-inventor applicant because it

may affect• Competency of RO/US• Competency of U.S. practitioner to represent applicant• Ability to file international application under the PCT

• Do not delay the filing of the oath or declaration in a 35 U.S.C. 371 application– The 14 month clock for patent term adjustment under 35 U.S.C. 154(b)(1)

(A) does not start until the requirements under section 371 have been fulfilled

• Include a signed ADS with the initial 371 submission if inventorship has changed and to express domestic benefit claims

• Early commencement still requires submission of an oath or declaration• The international filing date, NOT the date the 371 submission is filed,

determines applicability of the AIA

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Important Practice Tips (2)

• For international applications filed before September 16, 2012

– Consider filing a bypass continuation if• Status under 37 CFR 1.42 (deceased inventor) is needed

and there are complications identifying the legal representative or obtaining their signature

• Status under 37 CFR 1.47 is needed because an inventor refuses to sign or cannot be located after diligent effort

– Substitute statement practice is available in an application filed under 35 U.S.C. 111(a) on or after September 16, 2012

» Assignee or joint inventors may execute a substitute statement

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Patent Law Treaty

• Status – Senate passed S.3486 in September 2012• Major provisions

– Simplification of filing date requirements– Reference filing– Restoration of priority right– Single standard for revival, restoration of priority

right, delayed payment of issue fee, etc.• Unintentionality

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Thanks!

michael.neas@uspto.gov