IP Update, Vol. 10, No. 4 (12 September 2012)

Editors: Marc S. Weiner, Esq. and Nicholas P. Godici

Leahy-Smith America Invents Act (AIA) Final Rules

The USPTO has published some Final Rules to implement certain provisions of the AIA that will take effect on September 16, 2012.

U.S. patent applications filed on or after September 16, 2012, and all U.S. National Stage applications based on PCT International Applications having an international filing date on or after September 16, 2012, must use a Declaration that complies with the new rules.

As of September 16, 2012, the Oath or Declaration does not need to list the inventive entity. Each inventor may now individually execute his or her own Declaration without reference to any other co-inventor, if any. We have also made it possible for multiple inventors to sign one document by simply checking the box at the bottom of our form and adding the additional inventors.

Applicants

AIA expands who may be an Applicant. Inventors are no longer the only possible Applicants. Applicants may also be the Party to whom the Invention has been assigned, the Party to whom the inventor is under obligation to assign and the Party who otherwise shows proprietary interest in the matter.

The USPTO requires that the "Applicant" sign the Power of Attorney. The AIA Power of Attorney (PTO/AIA/80) should be signed by a representative of the Assignee when the inventor is the Applicant and a new AIA Power of Attorney (PTO/AIA/82B) should be signed by a representative of the Assignee when the Assignee is the Applicant.

Where the Assignee is not the Applicant and wants to prepare a specific Power of Attorney, the Assignee who is not the applicant should fill out both form PTO/AIA/80 and a statement under 37 C.F.R. 3.73(c), which is not yet available from the USPTO.

Where the Assignee is the Applicant and wants to prepare a specific Power of Attorney, the Assignee should fill out both form PTO/AIA/82A and form PTO/AIA/82B.

For your convenience, we provide the following filing options:

Applications with Assignee(s)

Option 1:

  • Combined Declaration and Assignment
  • Combined Declaration and Assignment (Multiple Assignees)
  • Power of Attorney(PTO/AIA/80) (Inventor is Applicant)
  • Power of Attorney (PTO/AIA/82B) (Assignee is Applicant)
  • Power of Attorney (PTO/AIA/82A)

Option 2:

  • U.S. Declaration
  • U.S. Assignment
  • Power of Attorney(PTO/AIA/80) (Inventor is Applicant)
  • Power of Attorney (PTO/AIA/82B) (Assignee is Applicant)
  • Power of Attorney (PTO/AIA/82A)

Applications without Assignee(s)

For patent or design applications without an assignee, we have provided a combined Declaration and Power of Attorney that must be executed by the Inventor(s).

  • Combined Declaration and Power of Attorney

The new forms are available on the forms page of our website. Please also contact us if you would like us to email you our new forms.

We will be posting dual language documents to our web page as soon as they are available.

Changes in Ownership

The USPTO must be notified of any change in ownership of the patent application by the time that the Issue Fee is paid.

Deadline for Filing the Declaration

The filing of the Declaration can be delayed until the application is in condition for allowance. We recommend filing the Declaration at the time that the application is filed at least because:

  1. The inventors may not be readily available in the future; and
  2. Filing the Declaration after the application filing date incurs a USPTO surcharge.

Application Data Sheets

Beginning on September 16, 2012, we will file an Application Data Sheet in each new application to notify the USPTO of the name, residence and mailing address of each inventor, along with the claim for foreign priority (if applicable) and the name and address of the Assignee(s). Please provide us with this this information when providing us with your instructions to file new U.S. patent applications.

Should you have any questions or need anything further, please do not hesitate to contact us.