USPTO's Rules Proposals


    On January 5, 2012, the USPTO published three proposals for changing the rules of practice to implement various sections of the America Invents Act (AIA) that are effective September 16, 2012.  Public comments regarding each of these proposals must be submitted by March 5, 2012.

    On January 6, 2012, the USPTO published an additional proposal for changing the rules of practice to implement the oath or declaration sections of the America Invents Act (AIA), which are also effective September 16, 2012. Public comments regarding this proposal must be submitted by March 6, 2012.

    Several additional proposals are expected later this month.  Highlights of each of these proposals are discussed below.

Click on this link to read the proposed rules:   

A.  Oath or Declaration Provisions

(1) Assignee would be able to apply for a patent without an oath/declaration signed by the inventor in limited circumstances only:  New 35 USC 118 will allow an assignee to apply for a patent without an oath/declaration signed by the inventor "on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties."  The USPTO has not interpreted this section to mean that an assignee can apply for a patent without the inventor's oath/declaration "in all circumstances." Instead, the USPTO proposes allowing an assignee to apply for a patent without an oath/declaration signed by the inventor in limited circumstance, including when the inventor is deceased or incapacitated. See Fed. Reg. at page 983, col. 3, and proposed 37 CFR 1.42.  The proposal does not significantly change oath/declaration practice. 

    (2) Single document oath/declaration and assignment: Under 35 USC 118 of the AIA, a single document combining the inventor's oath/declaration and assignment can be used.  The comments of the proposal indicate that, even if this single document were recorded electronically using the USPTO's EPAS system, another copy would also need to be filed with the application itself. See Fed. Reg. at page 991, col. 2.

    (3) Oath/Declaration would still be required at filing or shortly thereafter: Although the AIA permits the USPTO to delay requiring the oath or declaration until the application is in condition for allowance, the USPTO proposal is to continue to send a Notice to File Missing Parts and to require a surcharge if an application is filed without an oath or declaration. 

    (4) Modifications to the Inventor's Statements: The proposal would eliminate the requirement to identify the inventor's country of citizenship and the requirement to state that the inventor believes he/she is the "first" inventor. However, under the proposal, the inventor would have to state that "the application was made or was authorized to be made by the inventor." See proposed 37 CFR 1.63(a). 

    (5)  Claim for priority or benefit from earlier application must be included in ADS: Under the proposal, a claim for priority or benefit from an earlier foreign or domestic application must be included in an Application Data Sheet (ADS) or Supplemental ADS. See proposed 37 CFR 1.55 and 1.78.  Current procedure also allows a foreign priority claim to be listed in the inventor's oath or declaration and a domestic priority or benefit claim to be included in the first sentence of the specification. 

    (6) Copy of oath/declaration from parent could be used in CIP application: The proposal would allow an applicant to file a copy of the inventor's oath/declaration from a parent application in a continuation-in-part (CIP) application as long as all statements from the oath/declaration in the parent application are accurate.  For example, the inventor has "reviewed and understands the contents of the application for which the oath or declaration is being submitted." See Fed. Reg. at page 991, col. 3, and proposed 37 CFR 1.63(d).


    (7)  Reissue Oath/Declaration:  The proposal would streamline reissue oaths/declaration procedure.  For example, a supplemental reissue oath/declaration would no longer be necessary as long as at least one of the errors identified in the original reissue oath is still being corrected, and the assignee of record could sign the reissue oath/declaration even if the claimed subject matter is being broadened.  However, the proposal also would require that all broadening of the claims is identified in the reissue oath/declaration. See 37 CFR 1.172 & 1.175. 


B.  Preissuance Submissions by Third Parties

    Consistent with 35 USC 122(e) of the AIA, third party submission must be filed before the earlier of: (1) the date of allowance, or (2) the later of six months after the date of pre-grant publication or the date of a first office action rejecting any claim. See proposed 37 CFR 1.290(b).

    The requirements for listing and identifying publications by a third party would be similar to those of Information Disclosure Statements (IDSs).  In addition, third parties would have to provide a concise description of the asserted relevance of each listed document and identify themselves as a party that does not have a duty of disclosure.  See proposed 37 CFR 1.290(c)(2) & (5). 

    A third party would be able to submit three documents without paying a fee.  However, if the third party submits were to submit more than three documents, a fee equal to the USPTO IDS fee would need to be paid for every ten documents. See proposed 37 CFR 1.290(f) & (g). 


C.  Citations in Patent Files

    Consistent with 35 USC 301 of the AIA, the USPTO proposes modifying 37 CFR 1.501 to allow, in addition to submissions of prior art printed publications, submissions of "statements of the patent owner filed in a proceeding before a Federal Court or the Office in which the patent owner took a position on the scope of any claim of the patent."  "Statements of the patent owner" would not be considered for any other purpose than to determine the meaning of patent claim in a reexamination, inter partes review proceeding, or post grant review proceeding.  37 CFR 1.501(f). 

    Moreover, proposed 37 CFR 1.501(b)(1) would require the submitting party to explain the "pertinence and manner of applying" the submitted prior art or statement of the patent owner.  Current 37 CFR 1.501 does not require any specific explanation of pertinence.  If the submission is by the patent owner, the patent owner may also explain how the claims differ from the submitted prior art or statement of the patent owner. See proposed 37 CFR 1.501(b)(1). 

    A third party would be able to make the submission anonymously.  See proposed 37 CFR 1.501(d). 

 D.  Statute of Limitations for Disciplinary Procedure
    Consistent with 35 USC 32 of the AIA, the USPTO proposes modifying 37 CFR 11.34 to specify that a practitioner complaint by the Office of Enrollment and Discipline (OED) must be filed the later of (1) ten years after the date of misconduct or (2) one year after the OED is informed of the misconduct.