Patent Law FAQ

The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change:

‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’

This change allows assignees of the entire interest to take a more active role in patent prosecution by becoming the applicant. The AIA aimed to modernize the U.S. patent system and align it more closely with international practices.

For more detailed information on how the AIA affects assignee rights, refer to MPEP § 325 for applications filed on or after September 16, 2012.

The transition application statement is a requirement for certain applications that bridge the pre-AIA and AIA periods. Here are the key points:

• It applies to nonprovisional applications filed on or after March 16, 2013, that claim priority to a foreign application filed before March 16, 2013.
• The statement is required if the application contains or contained a claim to an invention with an effective filing date on or after March 16, 2013.
• The applicant must provide this statement within a specified time period.
• International design applications are exempt from this requirement.

As stated in the MPEP: If a nonprovisional application filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. This requirement helps the USPTO determine which law applies to the application.

To learn more:

• transition application statement
• AIA
• pre-AIA
• foreign priority
• effective filing date

While restoration of the right of priority allows for valid priority claims up to 14 months from the earliest priority date (or 8 months for design applications), pre-AIA applications are still subject to the 12-month statutory bar under pre-AIA 35 U.S.C. 102(b) and (d). MPEP 213.03 clarifies: ‘It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date.’

This means that while the priority claim may be valid, the earlier filed foreign application could still be used as prior art against a pre-AIA application if it was published more than one year before the U.S. filing date.

For more information on pre-AIA, visit: pre-AIA.

The first inventor to file provisions of the America Invents Act (AIA) have significant implications for priority and benefit claims, particularly for applications filed on or after March 16, 2013. Key points include:

1. The effective filing date of each claimed invention determines whether an application is subject to examination under AIA or pre-AIA 35 U.S.C. 102 and 103.
2. Applications that contain or contained at any time a claim with an effective filing date on or after March 16, 2013, are subject to the AIA version of 35 U.S.C. 102 and 103.
3. Applications that claim priority to or benefit of a pre-AIA application may be subject to additional requirements.

As stated in the MPEP: These provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time— (A) a claim to a claimed invention that has an effective filing date as defined under section 100(i) of title 35, United States Code, that is on or after March 16, 2013; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim. (MPEP 210)

For transition applications (those filed on or after March 16, 2013, that claim priority to or benefit of a pre-AIA application), applicants may need to provide a statement regarding the presence of claims with an effective filing date on or after March 16, 2013. This requirement is outlined in 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6).

For more information on effective filing date, visit: effective filing date.

For more information on first inventor to file, visit: first inventor to file.

For more information on pre-AIA, visit: pre-AIA.

For more information on transition applications, visit: transition applications.

For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if:

• An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application
• A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed

However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).

For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).

March 16, 2013 is a crucial date in U.S. patent law due to the implementation of the America Invents Act (AIA). This date marks the transition from the pre-AIA first-to-invent system to the AIA first-inventor-to-file system. The significance includes:

• Applications filed on or after this date are generally subject to AIA provisions
• The effective filing date of claimed inventions determines which law applies
• Transition applications may require special statements
• Different examination standards may apply based on the effective filing date

The MPEP states: “The first inventor to file provisions of Public Law 112-29, sec. 3, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective March 16, 2013. These provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time— (A) a claim to a claimed invention that has an effective filing date as defined under section 100(i) of title 35, United States Code, that is on or after March 16, 2013; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.”

A transition application under the America Invents Act (AIA) is:

• A nonprovisional application filed on or after March 16, 2013
• That claims foreign priority to, or domestic benefit of, an application filed before March 16, 2013

Transition applications can be either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications, depending on the effective filing date of the claimed invention(s).

The MPEP states: “Transition applications are nonprovisional applications that: (A) are filed on or after March 16, 2013; and (B) claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013. Transition applications are either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications depending on the effective filing date of the claimed invention(s).”

The first inventor to file provisions that took effect on 3/16/2013 require additional statements for certain “transition” applications:

– Transition applications are those filed on or after 3/16/2013 that claim priority to an application filed before 3/16/2013.
– If a transition application ever contained a claim having an effective filing date on or after 3/16/2013, a statement to that effect is required within the later of 4 months from the actual filing date, 4 months from national stage entry, 16 months from the prior application, or the date the claim was first presented.
– This statement requirement does not apply if the application only claims priority to applications filed on or after 3/16/2013, or if the applicants reasonably believe the application never contained such a claim.

See MPEP 210 and MPEP 2159 for more details.

For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if:

• An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application
• A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed

However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).

For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).

While restoration of the right of priority allows for valid priority claims up to 14 months from the earliest priority date (or 8 months for design applications), pre-AIA applications are still subject to the 12-month statutory bar under pre-AIA 35 U.S.C. 102(b) and (d). MPEP 213.03 clarifies: ‘It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date.’

This means that while the priority claim may be valid, the earlier filed foreign application could still be used as prior art against a pre-AIA application if it was published more than one year before the U.S. filing date.

For more information on pre-AIA, visit: pre-AIA.

What types of evidence can be used to establish assignee ownership in pre-AIA applications?

For pre-AIA applications (filed before September 16, 2012), assignees can use various types of evidence to establish ownership, including:

• Assignment documents
• Corporate merger documentation
• Patent purchase agreements
• Court orders
• Joint research agreements

The MPEP 324 states: “The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee.” This means that in addition to proving ownership, the assignee must also demonstrate the authority of the person acting on their behalf.

For more information on assignee ownership, visit: assignee ownership.

For more information on pre-AIA, visit: pre-AIA.

For more information on USPTO procedures, visit: USPTO procedures.

The America Invents Act (AIA) brought significant changes to patent law, including rules regarding patent ownership. The key differences between pre-AIA (before September 16, 2012) and AIA (on or after September 16, 2012) patent ownership rules are:

1. Applicability: Pre-AIA rules apply to applications filed before September 16, 2012, while AIA rules apply to applications filed on or after that date.
2. Juristic Entity Representation: Under AIA rules, juristic entities (e.g., corporations) must be represented by a patent practitioner for most actions. Pre-AIA rules allowed juristic entities to take certain actions without representation.
3. Ownership Establishment: The process for establishing ownership is slightly different, with AIA applications following 37 CFR 3.73 and pre-AIA applications following pre-AIA 37 CFR 3.73(b).
4. Inventor’s Oath or Declaration: AIA introduced changes to the inventor’s oath or declaration requirements, which can affect how assignees interact with the patent application process.

According to MPEP 324: [Editor Note: See MPEP § 325 for establishing the right of assignee to take action in an application filed on or after September 16, 2012.] This indicates that different sections of the MPEP should be consulted depending on the application’s filing date.

For more information on pre-AIA, visit: pre-AIA.

For more information on USPTO procedures, visit: USPTO procedures.

What is the difference between pre-AIA and AIA applications regarding assignee filing?

The key difference between pre-AIA (America Invents Act) and AIA applications regarding assignee filing lies in the requirements for establishing the right of an assignee to take action:

• Pre-AIA applications (filed before September 16, 2012): The assignee must establish their right to take action by filing evidence of ownership in the USPTO.
• AIA applications (filed on or after September 16, 2012): The assignee can simply be named as the applicant, eliminating the need to file evidence of ownership.

As stated in MPEP 324: “For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment.”

For more information on pre-AIA, visit: pre-AIA.

The initial ownership of a patent depends on the filing date of the application. For applications filed on or after September 16, 2012, the MPEP states:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a).’

For applications filed before September 16, 2012:

‘For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This distinction is important for determining the initial owner of a patent or patent application.

How can an assignee establish the right to take action in a pre-AIA application?

For pre-AIA applications (filed before September 16, 2012), an assignee can establish the right to take action by:

1. Filing papers in the USPTO demonstrating the chain of title from the inventor to the assignee, or
2. Specifying in the papers requesting or taking action that action is being taken pursuant to a specific 37 CFR provision.

According to MPEP 324: “The assignee must establish its ownership of the property to the satisfaction of the Director. The chain of title from the inventor to the assignee must be clearly established.” This typically involves submitting assignment documents or other evidence of ownership to the USPTO.

For more information on assignee rights, visit: assignee rights.

For more information on pre-AIA, visit: pre-AIA.

For more information on USPTO procedures, visit: USPTO procedures.

The initial ownership of a patent depends on the filing date of the application. For applications filed on or after September 16, 2012, the MPEP states:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a).’

For applications filed before September 16, 2012:

‘For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This distinction is important for determining the initial owner of a patent or patent application.

In patent applications filed before September 16, 2012, the power of attorney can be signed by either the inventor(s) or the assignee of the entire interest. However, the MPEP recommends that the assignee sign the power of attorney when one exists. As stated in the MPEP:

While a power of attorney may be signed by the inventor(s), the power of attorney should be signed by the assignee of the entire interest where one exists. Otherwise, the assignee may be paying the bill, while the inventor is providing the power of attorney, thereby possibly raising an issue as to who is the practitioner’s client.

This recommendation aims to avoid potential conflicts and ensure clear representation in cases where the relationship between the assignee and inventors may deteriorate.

To learn more:

• power of attorney
• patent application
• pre-AIA
• assignee
• inventor

Under pre-AIA 37 CFR 1.47(b), the term ‘person’ is broadly interpreted. The MPEP states that “The word ‘person’ has been construed by the U.S. Patent and Trademark Office to include juristic entities, such as a corporation.” This means that both individuals and legal entities can potentially file an application under this provision, provided they meet the other requirements.

To learn more:

• pre-AIA
• patent application
• juristic entities
• corporation

If a legal representative of a deceased inventor refuses to make application, the procedure depends on when the application was filed:

• For applications filed before September 16, 2012: Pre-AIA 37 CFR 1.47 applies. The MPEP states: pre-AIA 37 CFR 1.47 does apply where a known legal representative of a deceased inventor cannot be found or reached after diligent effort, or refuses to make application.
• In this case, you should:
  1. Document the refusal and the efforts made to reach the legal representative.
  2. Provide the last known address of the legal representative, as per MPEP § 409.03(e).
  3. File the application under pre-AIA 37 CFR 1.47, explaining the situation.
• For applications filed on or after September 16, 2012: Different procedures apply, which are not covered in this specific MPEP section. Consult the current USPTO regulations and guidelines for the appropriate course of action.

It’s important to note that these procedures are specific to cases where there is a known legal representative who is refusing to cooperate. Different rules may apply in other scenarios involving deceased inventors.

To learn more:

• Legal Representative
• Deceased Inventor
• Patent Application
• Refusal to Cooperate
• Pre-AIA

For a pre-AIA 37 CFR 1.47(b) application, the applicant must prove one of the following:

• The invention has been assigned to the applicant
• The inventor has agreed in writing to assign the invention to the applicant
• The applicant otherwise has sufficient proprietary interest in the subject matter to justify filing the application

As stated in MPEP 409.03(f):

“When an application is deposited pursuant to pre-AIA 37 CFR 1.47(b), the pre-AIA 37 CFR 1.47(b) applicant must prove that (A) the invention has been assigned to the applicant, or (B) the inventor has agreed in writing to assign the invention to the applicant, or (C) the applicant otherwise has sufficient proprietary interest in the subject matter to justify the filing of the application.”

The specific documentation required depends on which of these conditions is being met.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• proprietary interest
• patent application
• assignment

To learn more:

• 37 CFR 1.47(b)

When filing under pre-AIA 37 CFR 1.47(b), an applicant must prove that the filing of the application is necessary for specific reasons. The MPEP outlines two primary justifications:

1. To preserve the rights of the parties
2. To prevent irreparable damage

Specifically, the MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must prove that the filing of the application is necessary (1) to preserve the rights of the parties or (2) to prevent irreparable damage.”

This requirement ensures that the use of pre-AIA 37 CFR 1.47(b) is justified and not merely a matter of convenience. For more detailed information on proving necessity, refer to MPEP § 409.03(g).

To learn more:

• pre-AIA
• patent application
• filing necessity
• irreparable damage

The date September 16, 2012, is significant because it marks a change in the applicability of certain patent application procedures. As noted in MPEP 409.03(a):

“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]”

This date corresponds to the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. For applications filed on or after this date, different rules and procedures apply regarding joint inventorship and the handling of situations where not all inventors are available or willing to sign the application. It’s crucial for applicants to be aware of which set of rules applies to their application based on the filing date.

To learn more:

• joint inventors
• patent application
• America Invents Act
• pre-AIA
• AIA

The date September 16, 2012, is significant in patent applications involving deceased inventors because it marks a change in the applicable regulations. The MPEP section 409.03(c) states:

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]

This means:

• For applications filed before September 16, 2012: The procedures outlined in pre-AIA 37 CFR 1.47 apply when dealing with unavailable legal representatives of deceased inventors.
• For applications filed on or after September 16, 2012: Different regulations and procedures apply, which are not covered in this specific MPEP section.

This date coincides with the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. Patent applicants and attorneys should be aware of these changes and apply the appropriate procedures based on their application’s filing date.

To learn more:

• September 16 2012
• America Invents Act
• Pre-AIA
• Post-AIA
• Patent Application

Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):

“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”

This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.

When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.

To learn more:

• pre-AIA
• 35 U.S.C. 118
• proprietary interest
• patent application
• assignment

To learn more:

• 35 U.S.C. 118

In applications filed pursuant to pre-AIA 37 CFR 1.47, it is mandatory to state the last known address of the nonsigning inventor. The MPEP states:

‘An application filed pursuant to pre-AIA 37 CFR 1.47 must state the last known address of the nonsigning inventor.’

This requirement ensures that the USPTO can attempt to contact the nonsigning inventor regarding the application filed on their behalf.

To learn more:

• pre-AIA
• 37 CFR 1.47
• nonsigning inventor
• last known address

To learn more:

• 37 CFR 1.47

Pre-AIA 37 CFR 1.47(b) allows a person with a demonstrated proprietary interest to file a patent application on behalf of an inventor who is unavailable. According to the MPEP, this provision is applicable “when no inventor is available to make application” and permits filing “on behalf of and as agent for” an inventor who “cannot be found or reached after diligent effort” or who refuses to sign the application oath or declaration.

It’s important to note that this provision is not applicable to applications filed on or after September 16, 2012.

To learn more:

• pre-AIA
• patent application
• unavailable inventor
• proprietary interest

The main difference in power of attorney revocation between pre-AIA (before September 16, 2012) and post-AIA (on or after September 16, 2012) applications lies in who can sign the power of attorney and the process for revocation:

• Post-AIA (on or after September 16, 2012): The power of attorney must be signed by the applicant or patent owner. For an assignee to revoke a power of attorney, they must first become the applicant under 37 CFR 1.46(c).
• Pre-AIA (before September 16, 2012): The assignee of record of the entire interest can revoke the power of attorney of the applicant directly, provided they establish their right to take action under pre-AIA 37 CFR 3.73(b).

This change reflects the shift in USPTO regulations to give more control to the applicant in post-AIA applications, while pre-AIA rules allowed more direct action by assignees.

To learn more:

• pre-AIA
• post-AIA
• power of attorney
• assignee
• patent application
• revocation

MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:

• Assignment: A completed transfer of rights in the invention.
• Agreement to Assign: A promise to transfer rights in the future, often conditional.

For an assignment, MPEP 409.03(f) states:

“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”

For an agreement to assign:

“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”

Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• assignment
• agreement to assign
• proprietary interest

To learn more:

• 37 CFR 1.47(b)

Irreparable damage, in the context of patent applications, refers to a situation where a filing date is crucial to preserve the rights of an applicant or to prevent severe harm. According to MPEP 409.03(g):

Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.

This means that an applicant can demonstrate irreparable damage by providing a statement explaining why obtaining a specific filing date is essential to protect their rights or avoid significant harm.

To learn more:

• irreparable damage
• patent application
• filing date
• pre-AIA
• 37 CFR 1.47(b)

To learn more:

• 37 CFR 1.47(b)

A pre-AIA 37 CFR 1.47 application is a patent application filed before September 16, 2012, where not all inventors have signed the application. This provision allows for the filing of a patent application when an inventor cannot be reached or refuses to sign.

According to the MPEP, A filing date is assigned to an application deposited pursuant to pre-AIA 37 CFR 1.47 provided the requirements of 37 CFR 1.53(b) are met. This means that as long as the basic filing requirements are fulfilled, the application can be processed even without all inventors’ signatures.

To learn more:

• pre-AIA
• 37 CFR 1.47
• patent application
• inventor signature
• filing date

To learn more:

• 37 CFR 1.47

When an application is executed by someone other than the inventor under pre-AIA 37 CFR 1.47(b), the declaration must include specific information about the non-signing inventor. According to the MPEP, the declaration must state:

• The full name of the non-signing inventor
• The residence of the non-signing inventor
• The post office address of the non-signing inventor
• The citizenship of the non-signing inventor

Additionally, “the title or position of the person signing must be stated if signing on behalf of a corporation under pre-AIA 37 CFR 1.47(b).” This ensures that the person signing has the authority to do so on behalf of the corporation.

To learn more:

• pre-AIA
• patent application
• declaration requirements
• non-signing inventor

When a pre-AIA 37 CFR 1.47 application is found acceptable, certain information is published in the Official Gazette. According to the MPEP: A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s).

This publication serves several purposes:

• It provides public notice of the application’s existence.
• It identifies the nonsigning inventors, which may be important for legal or intellectual property reasons.
• It establishes a clear record of the application’s status under pre-AIA 37 CFR 1.47.

This publication is an important step in the processing of these special applications and ensures transparency in the patent application process.

To learn more:

• pre-AIA
• 37 CFR 1.47
• Official Gazette
• patent publication
• nonsigning inventors

To learn more:

• 37 CFR 1.47

When an inventor is added to a pre-AIA patent application through a 37 CFR 1.48 request, it can affect the existing power of attorney. According to MPEP 402.05(b):

If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request.

This means that if a new inventor is added and doesn’t provide a power of attorney consistent with the original one, the original power of attorney is lost. However, this doesn’t prevent a practitioner from acting under 37 CFR 1.34, which allows for acting in a representative capacity.

To learn more:

• power of attorney
• added inventor
• pre-AIA
• 37 CFR 1.48

To learn more:

• 37 CFR 1.48

The death of an inventor (or one of the joint inventors) typically terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012, unless the power of attorney is coupled with an interest (e.g., the patent practitioner is an assignee or part-assignee). As stated in MPEP 409.01(b):

“Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012.”

In such cases, a new power of attorney from the heirs, administrators, executors, or assignees is necessary if the deceased inventor was the sole inventor or if all powers of attorney in the application have been terminated.

To learn more:

• power of attorney
• deceased inventor
• patent application
• pre-AIA

In a pre-AIA 37 CFR 1.47 application, nonsigning inventors are notified of the application filing. The MPEP states: The U.S. Patent and Trademark Office will notify the nonsigning inventor(s) or, if the inventor is deceased, the legal representative(s), of the filing of an application under pre-AIA 37 CFR 1.47 by sending a letter to the last known address of the nonsigning inventor(s) or legal representative(s).

This notification process ensures that all inventors, even those who didn’t sign the application, are aware of the patent application filed using their invention. It’s important to note that this notification is a courtesy and doesn’t require a response from the nonsigning inventor for the application to proceed.

To learn more:

• pre-AIA
• 37 CFR 1.47
• nonsigning inventors
• USPTO notification
• patent application

To learn more:

• 37 CFR 1.47

When an inventor dies before filing a patent application, the legal representative (executor, administrator, etc.) of the deceased inventor can make the necessary oath or declaration and apply for the patent. This is specified in 37 CFR 1.42 (pre-AIA), which states:

“In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent.”

The legal representative must comply with the same requirements and conditions that would have been applicable to the inventor.

To learn more:

• deceased inventor
• legal representative
• patent application
• pre-AIA

If an inventor dies after filing a patent application but before the patent is granted, the process can still continue. According to 37 CFR 1.42 (pre-AIA):

“Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.”

However, MPEP 409.01(b) clarifies that the intervention of the executor or administrator is not compulsory:

“When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.”

This means that while it’s advisable for the legal representative to intervene, the patent application can still proceed to allowance or issuance even without such intervention.

To learn more:

• deceased inventor
• patent application
• patent issuance
• legal representative
• pre-AIA

When the legal representative of a deceased inventor is unavailable, the process depends on whether the application was filed before or after September 16, 2012:

• For applications filed before September 16, 2012: If the legal representative cannot be found or reached after diligent effort, or refuses to make application, pre-AIA 37 CFR 1.47 applies. In such cases, the last known address of the legal representative must be provided.
• For applications filed on or after September 16, 2012: The provisions of pre-AIA 37 CFR 1.47 do not apply. Instead, refer to current USPTO regulations and procedures.

It’s important to note that pre-AIA 37 CFR 1.47 is not an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 for deceased inventors. As stated in the MPEP, Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor.

To learn more:

• Deceased Inventor
• Legal Representative
• Patent Application
• Pre-AIA
• Post-AIA

For patent applications filed before September 16, 2012, the USPTO recommends specific forms for powers of attorney. According to the MPEP:

Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms) should be used for powers of attorney in applications filed before September 16, 2012.

Additionally, for patents that issued from applications filed before September 16, 2012, Form PTO/SB/81A may be used. It’s important to note that the USPTO no longer recommends or provides combined declaration and power of attorney forms. Practitioners should use separate forms for declarations and powers of attorney.

To learn more:

• power of attorney
• patent application
• pre-AIA
• USPTO forms

For pre-AIA applications (filed before September 16, 2012), the MPEP mentions a specific form that can be used by assignees to revoke a power of attorney and appoint a new one:

Form PTO/SB/80 may be used by an assignee of the entire interest of the applicant to revoke a power of attorney and appoint a new power of attorney.

The process involves:

• The assignee signing the power of attorney (Form PTO/SB/80)
• Either the assignee or the newly appointed practitioner signing a statement under pre-AIA 37 CFR 3.73(b)

Additionally, Form PTO/SB/96 or an equivalent can be used for the Statement Under pre-AIA 37 CFR 3.73(b). For details on who can sign this statement, refer to MPEP § 324, subsection V.

To learn more:

• pre-AIA
• power of attorney
• assignee
• revocation
• USPTO forms

To demonstrate an agreement to assign in a pre-AIA 37 CFR 1.47(b) application, you should provide:

• A copy of the written agreement to assign the invention
• If the agreement is conditional, a statement of facts showing the conditions have been met

MPEP 409.03(f) states:

“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted. If an agreement to assign is dependent on certain specified conditions being met, it must be established by a statement of facts by someone with first hand knowledge of the circumstances in which those conditions have been met.”

A common example is an employment agreement. In such cases, you must provide evidence that the invention was made during the course of employment, typically through a statement from someone with firsthand knowledge of the circumstances.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• agreement to assign
• patent application
• employment agreement

To learn more:

• 37 CFR 1.47(b)

For applications filed before September 16, 2012, the process for an assignee to revoke a power of attorney is different. According to the MPEP:

In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an ‘irrevocable’ right to prosecute the application had been given as in some government owned applications.

The assignee must establish their right to take action as provided in pre-AIA 37 CFR 3.73(b). Once this is done, a power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees.

Form PTO/SB/80 can be used by an assignee to revoke a power of attorney and appoint a new one. The assignee would sign the power of attorney, and either the assignee or the newly appointed practitioner would sign a statement under pre-AIA 37 CFR 3.73(b).

To learn more:

• pre-AIA
• power of attorney
• assignee
• patent application
• revocation

When filing a patent application with at least one unavailable joint inventor under pre-AIA 37 CFR 1.47(a), the following requirements must be met:

• All available joint inventors must make an oath or declaration for themselves and on behalf of the nonsigning inventor.
• Proof must be provided that the nonsigning inventor cannot be found or refuses to execute the application.
• The last known address of the nonsigning inventor must be stated.

As stated in MPEP 409.03(a):

“An application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements: (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 […] and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64.”

It’s important to note that this section is not applicable to applications filed on or after September 16, 2012.

To learn more:

• joint inventors
• unavailable inventor
• patent application
• pre-AIA
• oath
• declaration

The United States Patent and Trademark Office (USPTO) does not require proof of authority to be filed by a legal representative of a deceased or incapacitated inventor. MPEP 409.01(b) states:

“Proof of authority of the legal representative of a deceased or incapacitated inventor is not required.”

However, it’s important to note that while the USPTO doesn’t require this proof, the legal representative should ensure they are properly acting in such a capacity. The MPEP advises:

“Although the Office does not require proof of authority to be filed, any person acting as a legal representative of a deceased or incapacitated inventor should ensure that he or she is properly acting in such a capacity.”

This means that while formal proof isn’t needed for USPTO purposes, the legal representative should be prepared to demonstrate their authority if challenged in other legal contexts.

To learn more:

• legal representative
• proof of authority
• deceased inventor
• incapacitated inventor
• pre-AIA

The processing of a pre-AIA 37 CFR 1.47 application involves several steps:

1. A filing date is assigned if the application meets the requirements of 37 CFR 1.53(b).
2. A filing receipt is sent to the applicant.
3. The application or an electronic message about the petition is forwarded to the Office of Petitions.
4. If the papers are found acceptable, the Office of Petitions enters a decision in the file.
5. A notice is published in the Official Gazette with application details.
6. The USPTO notifies the nonsigning inventor(s) or legal representative(s) by letter.

As stated in the MPEP, When papers deposited pursuant to pre-AIA 37 CFR 1.47 are found acceptable, the Office of Petitions enters a decision to that effect in the file. A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s).

To learn more:

• pre-AIA
• 37 CFR 1.47
• patent application processing
• Office of Petitions
• Official Gazette

To learn more:

• 37 CFR 1.47

The guidance in MPEP 409.03(f) specifically addresses the issue of continuation-in-part (CIP) applications in relation to assignments. According to MPEP 409.03(f):

“An assignment of an application and any ‘reissue, division, or continuation of said application’ does not itself establish an assignment of a continuation-in-part application. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956).”

This means that even if an original application has been assigned, and that assignment includes language covering continuations and divisions, it does not automatically cover a continuation-in-part application. This is because a CIP application, by definition, contains new matter not present in the original application.

When dealing with a CIP application under pre-AIA 37 CFR 1.47(b), applicants need to ensure that the assignment or proof of proprietary interest specifically covers the new matter included in the CIP. A new assignment or demonstration of proprietary interest may be necessary for the portions of the CIP that were not present in the original application.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• continuation-in-part
• patent application
• assignment

To learn more:

• 37 CFR 1.47(b)

When an inventor becomes legally incapacitated before filing a patent application and executing the required oath or declaration, a legal representative must be appointed to act on their behalf. According to 37 CFR 1.43 (pre-AIA):

“In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.”

The legal representative, typically appointed by a court of competent jurisdiction, can then execute the oath or declaration and proceed with the patent application process on behalf of the incapacitated inventor.

To learn more:

• legal incapacitation
• legal representative
• patent application
• pre-AIA

In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios:

1. New power of attorney without explicit revocation: “When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.”
2. Assignee filing new power of attorney: “If the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee.”
3. Change in Customer Number: “If a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second.”

In all these cases, the most recently filed power of attorney will control, effectively revoking or replacing the previous ones.

To learn more:

• power of attorney
• revocation
• pre-AIA
• customer number

To file an application under pre-AIA 37 CFR 1.47(b), an applicant must demonstrate a proprietary interest in the subject matter of the application. The MPEP outlines three ways to establish this:

1. Show that the invention has been assigned to the applicant
2. Provide evidence that the inventor has agreed in writing to assign the invention to the applicant
3. Otherwise demonstrate a proprietary interest in the subject matter of the application

The MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application.”

For more detailed information on demonstrating proprietary interest, refer to MPEP § 409.03(f).

To learn more:

• pre-AIA
• patent application
• proprietary interest
• assignment

In pre-AIA patent applications (filed before September 16, 2012), a power of attorney given by the assignee of the entire interest has significant implications for previous powers of attorney. As stated in the MPEP:

A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in pre-AIA 37 CFR 3.71 and pre-AIA 37 CFR 3.73(b).

This means that when the assignee of the entire interest files a new power of attorney, it effectively cancels all previous powers of attorney given by the applicant or any prior assignees. However, the assignee must properly establish their right to take action in the application according to the relevant regulations.

To learn more:

• power of attorney
• patent application
• pre-AIA
• assignee
• revocation

To prove an invention has been assigned in a pre-AIA 37 CFR 1.47(b) application, you must submit the following:

• A copy of the assignment in English
• A statement under pre-AIA 37 CFR 3.73(b) by the assignee

According to MPEP 409.03(f):

“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant. A statement under pre-AIA 37 CFR 3.73(b) by the assignee must also be submitted (see MPEP § 324).”

It’s important to note that the assignment must specifically cover the invention described in the application. General assignments may not be sufficient.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• assignment
• patent application
• proof of ownership

To learn more:

• 37 CFR 1.47(b)

For patent applications filed before September 16, 2012, an applicant can revoke a power of attorney using Form PTO/SB/81. According to MPEP 402.05(b), “Form PTO/SB/81 may be used to revoke a power of attorney in an application filed before September 16, 2012.” The revocation can be done at any stage of the proceedings by an applicant for patent or an assignee of the entire interest of the applicant.

It’s important to note that fewer than all of the applicants or assignees may revoke the power of attorney only upon showing sufficient cause and paying a petition fee. The patent practitioner will be notified of the revocation, and the notice will be mailed to the correspondence address for the application in effect before the revocation.

To learn more:

• power of attorney
• revocation
• pre-AIA
• patent application

If an applicant in a pre-AIA 37 CFR 1.47(b) application doesn’t have an assignment or agreement to assign, they can demonstrate sufficient proprietary interest by:

• Submitting a legal memorandum
• Providing an affidavit or declaration of firsthand knowledge
• Including copies of relevant statutes or court decisions (if non-U.S.)

MPEP 409.03(f) states:

“A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the pre-AIA 37 CFR 1.47(b) applicant.”

The legal memorandum should be prepared by an attorney familiar with the relevant jurisdiction’s laws. Supporting facts should be provided through affidavits or declarations from individuals with firsthand knowledge. For non-U.S. jurisdictions, copies of relevant statutes or court decisions (in English) should be included.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• proprietary interest
• patent application
• legal memorandum

To learn more:

• 37 CFR 1.47(b)

For continuation or divisional applications filed under 37 CFR 1.53(b) of an application previously accorded status under pre-AIA 37 CFR 1.47, the process is simplified. The MPEP states: In a continuation or divisional application filed under 37 CFR 1.53(b) of an application accorded status under pre-AIA 37 CFR 1.47, if a copy of a declaration from a prior application and a copy of a decision according status under pre-AIA 37 CFR 1.47 are filed as permitted by pre-AIA 37 CFR 1.63(d)(3)(i), the notice will not be repeated.

This means that if the proper documentation from the original application is provided, the USPTO won’t repeat the notification process for nonsigning inventors. This streamlines the application process for related applications.

To learn more:

• pre-AIA
• 37 CFR 1.47
• continuation application
• divisional application
• patent procedure

To learn more:

• 37 CFR 1.47

No, this specific requirement does not apply to all patent applications. The MPEP clearly states:

‘[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]’

This means that the requirement to provide the last known address of a nonsigning inventor is only applicable to pre-AIA applications filed before September 16, 2012, under 37 CFR 1.47. For applications filed on or after this date, different rules may apply, and applicants should consult the current USPTO guidelines or seek legal advice.

To learn more:

• pre-AIA
• AIA
• patent application dates
• 37 CFR 1.47

To learn more:

• 37 CFR 1.47

Yes, heirs can apply for a patent on behalf of a deceased inventor under certain circumstances. According to MPEP 409.01(b):

“Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator.”

In such cases, the heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted pursuant to pre-AIA 37 CFR 1.63 and 1.64. This allows heirs to proceed with the patent application process when no formal legal representative has been appointed.

To learn more:

• heirs
• deceased inventor
• patent application
• pre-AIA

No, an inventor cannot authorize another individual to act as their agent to sign the application oath or declaration on their behalf. The MPEP is clear on this point, stating: “An inventor may not authorize another individual to act as his or her agent to sign the application oath or declaration on his or her behalf.”

This prohibition is supported by legal precedents, as the MPEP cites: “Staeger v. Commissioner, 189 USPQ 272 (D.D.C. 1976), In re Striker, 182 USPQ 507 (Comm’r Pat. 1973).” These cases reinforce the requirement for the inventor’s personal signature on the oath or declaration.

To learn more:

• pre-AIA
• patent application
• inventor authorization
• application oath

Yes, a patent application can be filed even if one joint inventor refuses to sign, provided certain conditions are met. According to MPEP 409.03(a):

“Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application ‘on behalf of’ themselves and on behalf of a joint inventor who ‘cannot be found or reached after diligent effort’ or who refuses to ‘join in an application.'”

To file the application, the available joint inventors must make an oath or declaration on their own behalf and on behalf of the nonsigning inventor. Additionally, proof must be provided that the nonsigning inventor refuses to execute the application papers. This process allows the patent application to proceed despite the refusal of one joint inventor to participate.

To learn more:

• joint inventors
• refusing inventor
• patent application
• pre-AIA

In a pre-AIA 37 CFR 1.47 application, a nonsigning inventor has limited rights regarding the power of attorney. According to MPEP 402.05(b):

A nonsigning inventor may subsequently join in a pre-AIA 37 CFR 1.47 application by submitting an oath or declaration under pre-AIA 37 CFR 1.63. However, even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the pre-AIA 37 CFR 1.47 applicant.

This means that while a nonsigning inventor can later join the application by submitting the required oath or declaration, they do not have the authority to unilaterally revoke or grant a power of attorney. Any such action would require the agreement of the original pre-AIA 37 CFR 1.47 applicant.

To learn more:

• power of attorney
• nonsigning inventor
• pre-AIA
• 37 CFR 1.47

To learn more:

• 37 CFR 1.47

Yes, a corporation can file a patent application under pre-AIA 37 CFR 1.47(b). The MPEP explicitly states that “Where a corporation is the pre-AIA 37 CFR 1.47(b) applicant, an officer (President, Vice-President, Secretary, Treasurer, or Chief Executive Officer) thereof should normally sign the necessary oath or declaration.”

Additionally, “A corporation may authorize any person, including an attorney or agent registered to practice before the U.S. Patent and Trademark Office, to sign the application oath or declaration on its behalf.” However, proper authorization or proof of authority may be required in such cases.

To learn more:

• pre-AIA
• patent application
• corporation
• corporate officers

Yes, there are exceptions to the requirement for all applicants to sign power of attorney documents. The MPEP provides one specific exception:

“In an application filed under pre-AIA 37 CFR 1.47(a), an assignee of the entire interest of the available inventors (i.e., the applicant) who has signed the declaration may appoint or revoke a power of attorney without a petition under 37 CFR 1.36(a) or 1.183.”

This exception applies to applications filed before the America Invents Act (AIA) under specific circumstances. However, it’s important to note that this exception does not apply in all cases. The MPEP also states:

“However, in applications accepted under pre-AIA 37 CFR 1.47, such a petition under 37 CFR 1.36(a) or 1.183 submitted by a previously nonsigning inventor who has now joined in the application will not be granted.”

For more information on these exceptions, refer to MPEP § 402.07 and MPEP § 409.03(i).

To learn more:

• Power of Attorney
• Patent Application
• USPTO
• Pre-AIA
• Exceptions

In patent applications filed before September 16, 2012, the power of attorney can be signed by either the inventor(s) or the assignee of the entire interest. However, the MPEP recommends that the assignee sign the power of attorney when one exists. As stated in the MPEP:

While a power of attorney may be signed by the inventor(s), the power of attorney should be signed by the assignee of the entire interest where one exists. Otherwise, the assignee may be paying the bill, while the inventor is providing the power of attorney, thereby possibly raising an issue as to who is the practitioner’s client.

This recommendation aims to avoid potential conflicts and ensure clear representation in cases where the relationship between the assignee and inventors may deteriorate.

To learn more:

• power of attorney
• patent application
• pre-AIA
• assignee
• inventor

Under pre-AIA 37 CFR 1.47(b), the term ‘person’ is broadly interpreted. The MPEP states that “The word ‘person’ has been construed by the U.S. Patent and Trademark Office to include juristic entities, such as a corporation.” This means that both individuals and legal entities can potentially file an application under this provision, provided they meet the other requirements.

To learn more:

• pre-AIA
• patent application
• juristic entities
• corporation

For patent applications filed before September 16, 2012, the oath or declaration can be administered by various authorized individuals, depending on the location. According to pre-AIA 35 U.S.C. 115:

• Within the United States: Any person authorized by law to administer oaths
• In a foreign country:
  • A diplomatic or consular officer of the United States authorized to administer oaths
  • An officer having an official seal and authorized to administer oaths in the foreign country, whose authority is proved by a certificate of a U.S. diplomatic or consular officer
  • An official designated by a foreign country that, by treaty or convention, accords like effect to apostilles of designated officials in the United States

The law states: Such oath is valid if it complies with the laws of the state or country where made. This provision ensures flexibility in oath administration while maintaining legal validity across different jurisdictions.

To learn more:

• oath administration
• declaration
• patent application
• pre-AIA
• foreign country

For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if:

• An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application
• A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed

However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).

For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).

What types of evidence can be used to establish assignee ownership in pre-AIA applications?

For pre-AIA applications (filed before September 16, 2012), assignees can use various types of evidence to establish ownership, including:

• Assignment documents
• Corporate merger documentation
• Patent purchase agreements
• Court orders
• Joint research agreements

The MPEP 324 states: “The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee.” This means that in addition to proving ownership, the assignee must also demonstrate the authority of the person acting on their behalf.

For more information on assignee ownership, visit: assignee ownership.

For more information on pre-AIA, visit: pre-AIA.

For more information on USPTO procedures, visit: USPTO procedures.

If a legal representative of a deceased inventor refuses to make application, the procedure depends on when the application was filed:

• For applications filed before September 16, 2012: Pre-AIA 37 CFR 1.47 applies. The MPEP states: pre-AIA 37 CFR 1.47 does apply where a known legal representative of a deceased inventor cannot be found or reached after diligent effort, or refuses to make application.
• In this case, you should:
  1. Document the refusal and the efforts made to reach the legal representative.
  2. Provide the last known address of the legal representative, as per MPEP § 409.03(e).
  3. File the application under pre-AIA 37 CFR 1.47, explaining the situation.
• For applications filed on or after September 16, 2012: Different procedures apply, which are not covered in this specific MPEP section. Consult the current USPTO regulations and guidelines for the appropriate course of action.

It’s important to note that these procedures are specific to cases where there is a known legal representative who is refusing to cooperate. Different rules may apply in other scenarios involving deceased inventors.

To learn more:

• Legal Representative
• Deceased Inventor
• Patent Application
• Refusal to Cooperate
• Pre-AIA

For a pre-AIA 37 CFR 1.47(b) application, the applicant must prove one of the following:

• The invention has been assigned to the applicant
• The inventor has agreed in writing to assign the invention to the applicant
• The applicant otherwise has sufficient proprietary interest in the subject matter to justify filing the application

As stated in MPEP 409.03(f):

“When an application is deposited pursuant to pre-AIA 37 CFR 1.47(b), the pre-AIA 37 CFR 1.47(b) applicant must prove that (A) the invention has been assigned to the applicant, or (B) the inventor has agreed in writing to assign the invention to the applicant, or (C) the applicant otherwise has sufficient proprietary interest in the subject matter to justify the filing of the application.”

The specific documentation required depends on which of these conditions is being met.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• proprietary interest
• patent application
• assignment

To learn more:

• 37 CFR 1.47(b)

When filing under pre-AIA 37 CFR 1.47(b), an applicant must prove that the filing of the application is necessary for specific reasons. The MPEP outlines two primary justifications:

1. To preserve the rights of the parties
2. To prevent irreparable damage

Specifically, the MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must prove that the filing of the application is necessary (1) to preserve the rights of the parties or (2) to prevent irreparable damage.”

This requirement ensures that the use of pre-AIA 37 CFR 1.47(b) is justified and not merely a matter of convenience. For more detailed information on proving necessity, refer to MPEP § 409.03(g).

To learn more:

• pre-AIA
• patent application
• filing necessity
• irreparable damage

The transition application statement is a requirement for certain applications that bridge the pre-AIA and AIA periods. Here are the key points:

• It applies to nonprovisional applications filed on or after March 16, 2013, that claim priority to a foreign application filed before March 16, 2013.
• The statement is required if the application contains or contained a claim to an invention with an effective filing date on or after March 16, 2013.
• The applicant must provide this statement within a specified time period.
• International design applications are exempt from this requirement.

As stated in the MPEP: If a nonprovisional application filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. This requirement helps the USPTO determine which law applies to the application.

To learn more:

• transition application statement
• AIA
• pre-AIA
• foreign priority
• effective filing date

The date September 16, 2012, is significant because it marks a change in the applicability of certain patent application procedures. As noted in MPEP 409.03(a):

“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]”

This date corresponds to the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. For applications filed on or after this date, different rules and procedures apply regarding joint inventorship and the handling of situations where not all inventors are available or willing to sign the application. It’s crucial for applicants to be aware of which set of rules applies to their application based on the filing date.

To learn more:

• joint inventors
• patent application
• America Invents Act
• pre-AIA
• AIA

The date September 16, 2012, is significant in patent applications involving deceased inventors because it marks a change in the applicable regulations. The MPEP section 409.03(c) states:

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]

This means:

• For applications filed before September 16, 2012: The procedures outlined in pre-AIA 37 CFR 1.47 apply when dealing with unavailable legal representatives of deceased inventors.
• For applications filed on or after September 16, 2012: Different regulations and procedures apply, which are not covered in this specific MPEP section.

This date coincides with the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. Patent applicants and attorneys should be aware of these changes and apply the appropriate procedures based on their application’s filing date.

To learn more:

• September 16 2012
• America Invents Act
• Pre-AIA
• Post-AIA
• Patent Application

March 16, 2013 is a crucial date in U.S. patent law due to the implementation of the America Invents Act (AIA). This date marks the transition from the pre-AIA first-to-invent system to the AIA first-inventor-to-file system. The significance includes:

• Applications filed on or after this date are generally subject to AIA provisions
• The effective filing date of claimed inventions determines which law applies
• Transition applications may require special statements
• Different examination standards may apply based on the effective filing date

The MPEP states: “The first inventor to file provisions of Public Law 112-29, sec. 3, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective March 16, 2013. These provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time— (A) a claim to a claimed invention that has an effective filing date as defined under section 100(i) of title 35, United States Code, that is on or after March 16, 2013; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.”

Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):

“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”

This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.

When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.

To learn more:

• pre-AIA
• 35 U.S.C. 118
• proprietary interest
• patent application
• assignment

To learn more:

• 35 U.S.C. 118

In applications filed pursuant to pre-AIA 37 CFR 1.47, it is mandatory to state the last known address of the nonsigning inventor. The MPEP states:

‘An application filed pursuant to pre-AIA 37 CFR 1.47 must state the last known address of the nonsigning inventor.’

This requirement ensures that the USPTO can attempt to contact the nonsigning inventor regarding the application filed on their behalf.

To learn more:

• pre-AIA
• 37 CFR 1.47
• nonsigning inventor
• last known address

To learn more:

• 37 CFR 1.47

Pre-AIA 37 CFR 1.47(b) allows a person with a demonstrated proprietary interest to file a patent application on behalf of an inventor who is unavailable. According to the MPEP, this provision is applicable “when no inventor is available to make application” and permits filing “on behalf of and as agent for” an inventor who “cannot be found or reached after diligent effort” or who refuses to sign the application oath or declaration.

It’s important to note that this provision is not applicable to applications filed on or after September 16, 2012.

To learn more:

• pre-AIA
• patent application
• unavailable inventor
• proprietary interest

While restoration of the right of priority allows for valid priority claims up to 14 months from the earliest priority date (or 8 months for design applications), pre-AIA applications are still subject to the 12-month statutory bar under pre-AIA 35 U.S.C. 102(b) and (d). MPEP 213.03 clarifies: ‘It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date.’

This means that while the priority claim may be valid, the earlier filed foreign application could still be used as prior art against a pre-AIA application if it was published more than one year before the U.S. filing date.

For more information on pre-AIA, visit: pre-AIA.

The main difference in power of attorney revocation between pre-AIA (before September 16, 2012) and post-AIA (on or after September 16, 2012) applications lies in who can sign the power of attorney and the process for revocation:

• Post-AIA (on or after September 16, 2012): The power of attorney must be signed by the applicant or patent owner. For an assignee to revoke a power of attorney, they must first become the applicant under 37 CFR 1.46(c).
• Pre-AIA (before September 16, 2012): The assignee of record of the entire interest can revoke the power of attorney of the applicant directly, provided they establish their right to take action under pre-AIA 37 CFR 3.73(b).

This change reflects the shift in USPTO regulations to give more control to the applicant in post-AIA applications, while pre-AIA rules allowed more direct action by assignees.

To learn more:

• pre-AIA
• post-AIA
• power of attorney
• assignee
• patent application
• revocation

The America Invents Act (AIA) brought significant changes to patent law, including rules regarding patent ownership. The key differences between pre-AIA (before September 16, 2012) and AIA (on or after September 16, 2012) patent ownership rules are:

1. Applicability: Pre-AIA rules apply to applications filed before September 16, 2012, while AIA rules apply to applications filed on or after that date.
2. Juristic Entity Representation: Under AIA rules, juristic entities (e.g., corporations) must be represented by a patent practitioner for most actions. Pre-AIA rules allowed juristic entities to take certain actions without representation.
3. Ownership Establishment: The process for establishing ownership is slightly different, with AIA applications following 37 CFR 3.73 and pre-AIA applications following pre-AIA 37 CFR 3.73(b).
4. Inventor’s Oath or Declaration: AIA introduced changes to the inventor’s oath or declaration requirements, which can affect how assignees interact with the patent application process.

According to MPEP 324: [Editor Note: See MPEP § 325 for establishing the right of assignee to take action in an application filed on or after September 16, 2012.] This indicates that different sections of the MPEP should be consulted depending on the application’s filing date.

For more information on pre-AIA, visit: pre-AIA.

For more information on USPTO procedures, visit: USPTO procedures.

What is the difference between pre-AIA and AIA applications regarding assignee filing?

The key difference between pre-AIA (America Invents Act) and AIA applications regarding assignee filing lies in the requirements for establishing the right of an assignee to take action:

• Pre-AIA applications (filed before September 16, 2012): The assignee must establish their right to take action by filing evidence of ownership in the USPTO.
• AIA applications (filed on or after September 16, 2012): The assignee can simply be named as the applicant, eliminating the need to file evidence of ownership.

As stated in MPEP 324: “For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment.”

For more information on pre-AIA, visit: pre-AIA.

MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:

• Assignment: A completed transfer of rights in the invention.
• Agreement to Assign: A promise to transfer rights in the future, often conditional.

For an assignment, MPEP 409.03(f) states:

“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”

For an agreement to assign:

“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”

Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• assignment
• agreement to assign
• proprietary interest

To learn more:

• 37 CFR 1.47(b)

Irreparable damage, in the context of patent applications, refers to a situation where a filing date is crucial to preserve the rights of an applicant or to prevent severe harm. According to MPEP 409.03(g):

Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.

This means that an applicant can demonstrate irreparable damage by providing a statement explaining why obtaining a specific filing date is essential to protect their rights or avoid significant harm.

To learn more:

• irreparable damage
• patent application
• filing date
• pre-AIA
• 37 CFR 1.47(b)

To learn more:

• 37 CFR 1.47(b)

An Application Data Sheet (ADS) is a voluntary submission for patent applications filed before September 16, 2012, that contains bibliographic data arranged in a specific format. According to MPEP 601.05(b), “An application data sheet is a sheet or sheets, that may be voluntarily submitted in either provisional or nonprovisional applications, which contains bibliographic data, arranged in a format specified by the Office.” The ADS becomes part of the application and must be titled “Application Data Sheet.”

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Patent Application
• Bibliographic Data

A transition application under the America Invents Act (AIA) is:

• A nonprovisional application filed on or after March 16, 2013
• That claims foreign priority to, or domestic benefit of, an application filed before March 16, 2013

Transition applications can be either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications, depending on the effective filing date of the claimed invention(s).

The MPEP states: “Transition applications are nonprovisional applications that: (A) are filed on or after March 16, 2013; and (B) claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013. Transition applications are either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications depending on the effective filing date of the claimed invention(s).”

A pre-AIA 37 CFR 1.47 application is a patent application filed before September 16, 2012, where not all inventors have signed the application. This provision allows for the filing of a patent application when an inventor cannot be reached or refuses to sign.

According to the MPEP, A filing date is assigned to an application deposited pursuant to pre-AIA 37 CFR 1.47 provided the requirements of 37 CFR 1.53(b) are met. This means that as long as the basic filing requirements are fulfilled, the application can be processed even without all inventors’ signatures.

To learn more:

• pre-AIA
• 37 CFR 1.47
• patent application
• inventor signature
• filing date

To learn more:

• 37 CFR 1.47

For applications filed before September 16, 2012, the Application Data Sheet (ADS) should include the following information:

• Applicant information
• Correspondence address
• Application information
• Representative information
• Domestic priority information
• Foreign priority information
• Assignee information

As stated in MPEP 601.05(b): The ADS must include all of the section headings listed in 37 CFR 1.76(b), even if no information is being provided for some of the sections. This ensures consistency and completeness in the application filing process.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Patent Application

For patent applications filed before September 16, 2012, the oath or declaration must include specific information about foreign applications if not provided in an application data sheet. According to pre-AIA 37 CFR 1.63(c)(2), the oath or declaration must identify:

• Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made
• Any foreign application having a filing date before that of the application on which priority is claimed

The MPEP elaborates: The applicant is required to recite all foreign applications filed prior to the application on which priority is claimed. It is required to give the foreign application number and name of the country or office in which filed, as well as the filing date of each foreign application to which priority is claimed.

This information is crucial for establishing priority claims and ensuring compliance with patent law requirements regarding prior foreign filings.

To learn more:

• foreign applications
• oath
• declaration
• priority claim
• pre-AIA

When an application is executed by someone other than the inventor under pre-AIA 37 CFR 1.47(b), the declaration must include specific information about the non-signing inventor. According to the MPEP, the declaration must state:

• The full name of the non-signing inventor
• The residence of the non-signing inventor
• The post office address of the non-signing inventor
• The citizenship of the non-signing inventor

Additionally, “the title or position of the person signing must be stated if signing on behalf of a corporation under pre-AIA 37 CFR 1.47(b).” This ensures that the person signing has the authority to do so on behalf of the corporation.

To learn more:

• pre-AIA
• patent application
• declaration requirements
• non-signing inventor

When a pre-AIA 37 CFR 1.47 application is found acceptable, certain information is published in the Official Gazette. According to the MPEP: A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s).

This publication serves several purposes:

• It provides public notice of the application’s existence.
• It identifies the nonsigning inventors, which may be important for legal or intellectual property reasons.
• It establishes a clear record of the application’s status under pre-AIA 37 CFR 1.47.

This publication is an important step in the processing of these special applications and ensures transparency in the patent application process.

To learn more:

• pre-AIA
• 37 CFR 1.47
• Official Gazette
• patent publication
• nonsigning inventors

To learn more:

• 37 CFR 1.47

An Application Data Sheet (ADS) for pre-AIA applications includes several categories of bibliographic information:

• Applicant information (name, residence, mailing address, and citizenship)
• Correspondence information
• Application information (title, classification, drawings, etc.)
• Representative information
• Domestic priority information
• Foreign priority information
• Assignee information

As stated in MPEP 601.05(b), “Bibliographic data as used in paragraph (a) of this section includes: (1) Applicant information… (2) Correspondence information… (3) Application information… (4) Representative information… (5) Domestic priority information… (6) Foreign priority information… (7) Assignee information…”

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Bibliographic Data
• Patent Application Information

When an inventor is added to a pre-AIA patent application through a 37 CFR 1.48 request, it can affect the existing power of attorney. According to MPEP 402.05(b):

If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request.

This means that if a new inventor is added and doesn’t provide a power of attorney consistent with the original one, the original power of attorney is lost. However, this doesn’t prevent a practitioner from acting under 37 CFR 1.34, which allows for acting in a representative capacity.

To learn more:

• power of attorney
• added inventor
• pre-AIA
• 37 CFR 1.48

To learn more:

• 37 CFR 1.48

The death of an inventor (or one of the joint inventors) typically terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012, unless the power of attorney is coupled with an interest (e.g., the patent practitioner is an assignee or part-assignee). As stated in MPEP 409.01(b):

“Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012.”

In such cases, a new power of attorney from the heirs, administrators, executors, or assignees is necessary if the deceased inventor was the sole inventor or if all powers of attorney in the application have been terminated.

To learn more:

• power of attorney
• deceased inventor
• patent application
• pre-AIA

In a pre-AIA 37 CFR 1.47 application, nonsigning inventors are notified of the application filing. The MPEP states: The U.S. Patent and Trademark Office will notify the nonsigning inventor(s) or, if the inventor is deceased, the legal representative(s), of the filing of an application under pre-AIA 37 CFR 1.47 by sending a letter to the last known address of the nonsigning inventor(s) or legal representative(s).

This notification process ensures that all inventors, even those who didn’t sign the application, are aware of the patent application filed using their invention. It’s important to note that this notification is a courtesy and doesn’t require a response from the nonsigning inventor for the application to proceed.

To learn more:

• pre-AIA
• 37 CFR 1.47
• nonsigning inventors
• USPTO notification
• patent application

To learn more:

• 37 CFR 1.47

When an inventor dies before filing a patent application, the legal representative (executor, administrator, etc.) of the deceased inventor can make the necessary oath or declaration and apply for the patent. This is specified in 37 CFR 1.42 (pre-AIA), which states:

“In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent.”

The legal representative must comply with the same requirements and conditions that would have been applicable to the inventor.

To learn more:

• deceased inventor
• legal representative
• patent application
• pre-AIA

If an inventor dies after filing a patent application but before the patent is granted, the process can still continue. According to 37 CFR 1.42 (pre-AIA):

“Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.”

However, MPEP 409.01(b) clarifies that the intervention of the executor or administrator is not compulsory:

“When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.”

This means that while it’s advisable for the legal representative to intervene, the patent application can still proceed to allowance or issuance even without such intervention.

To learn more:

• deceased inventor
• patent application
• patent issuance
• legal representative
• pre-AIA

When the legal representative of a deceased inventor is unavailable, the process depends on whether the application was filed before or after September 16, 2012:

• For applications filed before September 16, 2012: If the legal representative cannot be found or reached after diligent effort, or refuses to make application, pre-AIA 37 CFR 1.47 applies. In such cases, the last known address of the legal representative must be provided.
• For applications filed on or after September 16, 2012: The provisions of pre-AIA 37 CFR 1.47 do not apply. Instead, refer to current USPTO regulations and procedures.

It’s important to note that pre-AIA 37 CFR 1.47 is not an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 for deceased inventors. As stated in the MPEP, Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor.

To learn more:

• Deceased Inventor
• Legal Representative
• Patent Application
• Pre-AIA
• Post-AIA

For patent applications filed before September 16, 2012, the USPTO recommends specific forms for powers of attorney. According to the MPEP:

Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms) should be used for powers of attorney in applications filed before September 16, 2012.

Additionally, for patents that issued from applications filed before September 16, 2012, Form PTO/SB/81A may be used. It’s important to note that the USPTO no longer recommends or provides combined declaration and power of attorney forms. Practitioners should use separate forms for declarations and powers of attorney.

To learn more:

• power of attorney
• patent application
• pre-AIA
• USPTO forms

For pre-AIA applications (filed before September 16, 2012), the MPEP mentions a specific form that can be used by assignees to revoke a power of attorney and appoint a new one:

Form PTO/SB/80 may be used by an assignee of the entire interest of the applicant to revoke a power of attorney and appoint a new power of attorney.

The process involves:

• The assignee signing the power of attorney (Form PTO/SB/80)
• Either the assignee or the newly appointed practitioner signing a statement under pre-AIA 37 CFR 3.73(b)

Additionally, Form PTO/SB/96 or an equivalent can be used for the Statement Under pre-AIA 37 CFR 3.73(b). For details on who can sign this statement, refer to MPEP § 324, subsection V.

To learn more:

• pre-AIA
• power of attorney
• assignee
• revocation
• USPTO forms

To demonstrate an agreement to assign in a pre-AIA 37 CFR 1.47(b) application, you should provide:

• A copy of the written agreement to assign the invention
• If the agreement is conditional, a statement of facts showing the conditions have been met

MPEP 409.03(f) states:

“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted. If an agreement to assign is dependent on certain specified conditions being met, it must be established by a statement of facts by someone with first hand knowledge of the circumstances in which those conditions have been met.”

A common example is an employment agreement. In such cases, you must provide evidence that the invention was made during the course of employment, typically through a statement from someone with firsthand knowledge of the circumstances.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• agreement to assign
• patent application
• employment agreement

To learn more:

• 37 CFR 1.47(b)

For applications filed before September 16, 2012, the process for an assignee to revoke a power of attorney is different. According to the MPEP:

In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an ‘irrevocable’ right to prosecute the application had been given as in some government owned applications.

The assignee must establish their right to take action as provided in pre-AIA 37 CFR 3.73(b). Once this is done, a power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees.

Form PTO/SB/80 can be used by an assignee to revoke a power of attorney and appoint a new one. The assignee would sign the power of attorney, and either the assignee or the newly appointed practitioner would sign a statement under pre-AIA 37 CFR 3.73(b).

To learn more:

• pre-AIA
• power of attorney
• assignee
• patent application
• revocation

For pre-AIA applications, submitting a supplemental Application Data Sheet (ADS) must follow specific requirements:

1. Timing: MPEP 601.05(b) states, “Supplemental application data sheets may be subsequently supplied prior to payment of the issue fee to either correct or update information in a previously submitted application data sheet, or an oath or declaration under pre-AIA 37 CFR 1.63 or 1.67.”

2. Title: The supplemental ADS must be titled “Supplemental Application Data Sheet.”

3. Content: It must contain all section headings listed in 37 CFR 1.76(b) with all appropriate data for each heading.

4. Format: The supplemental ADS must indicate changes, “preferably with insertions or additions indicated by underlining, and deletions, with or without replacement data, indicated by strike-through or brackets.”

5. Signature: The supplemental ADS must be signed as it is considered a paper filed in the application.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Supplemental ADS
• Patent Application

When filing a patent application with at least one unavailable joint inventor under pre-AIA 37 CFR 1.47(a), the following requirements must be met:

• All available joint inventors must make an oath or declaration for themselves and on behalf of the nonsigning inventor.
• Proof must be provided that the nonsigning inventor cannot be found or refuses to execute the application.
• The last known address of the nonsigning inventor must be stated.

As stated in MPEP 409.03(a):

“An application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements: (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 […] and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64.”

It’s important to note that this section is not applicable to applications filed on or after September 16, 2012.

To learn more:

• joint inventors
• unavailable inventor
• patent application
• pre-AIA
• oath
• declaration

For applications filed before September 16, 2012, the requirements for an inventor’s oath or declaration are governed by pre-AIA 37 CFR 1.63. The oath or declaration must:

1. Be executed (signed) in accordance with pre-AIA 37 CFR 1.66 or pre-AIA 37 CFR 1.68.
2. Identify each inventor by full name, including family name and at least one given name, without abbreviation.
3. Identify the country of citizenship of each inventor.
4. State that the person making the oath or declaration believes the named inventor(s) to be the original and first inventor(s) of the subject matter claimed.
5. State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims.
6. Acknowledge the duty to disclose to the Office all information known to be material to patentability as defined in 37 CFR 1.56.

These requirements are different from those for applications filed on or after September 16, 2012, and it’s important to use the correct version of the oath or declaration based on the application’s filing date.

To learn more:

• Pre-AIA
• Inventor’s oath
• Declaration
• Patent application
• Legal requirements

The rules regarding who can be a patent applicant changed significantly for applications filed on or after September 16, 2012. MPEP § 605 outlines these differences:

For applications filed on or after September 16, 2012:

“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”

For applications filed before September 16, 2012:

“For applications filed before September 16, 2012, a person to whom the inventor assigned an invention could file and prosecute an application for patent, but the inventor is considered the applicant.”

The key differences are:

• Pre-AIA: Only the inventor could be listed as the applicant, even if the application was filed by an assignee.
• Post-AIA: Assignees, those obligated to assign, or those with sufficient proprietary interest can be listed as the applicant.

For more detailed information, refer to MPEP § 605.01 for post-AIA applications and MPEP § 605.02 for pre-AIA applications.

To learn more:

• patent applicant rules
• pre-AIA
• post-AIA
• patent law changes
• America Invents Act

What are the consequences of not submitting an Application Data Sheet (ADS) in applications filed before September 16, 2012?

For applications filed before September 16, 2012, submitting an Application Data Sheet (ADS) was not mandatory. The MPEP 601.05(b) states:

In applications filed before September 16, 2012, the application data sheet is not a requirement of 37 CFR 1.51(b) for a complete application, but is rather supplemental to the application and is used to capture bibliographic information.

However, not submitting an ADS could lead to the following consequences:

• Manual data entry: The USPTO would have to manually enter bibliographic information from other application papers, which could potentially lead to errors.
• Delayed processing: Without an ADS, the application processing might take longer as the information needs to be gathered from various sources.
• Potential for inconsistencies: Information scattered across different documents might lead to inconsistencies in the application record.
• Missed benefits: Certain benefits, such as easily claiming domestic benefit or foreign priority, might be harder to establish without an ADS.

While not submitting an ADS wouldn’t result in an incomplete application, it was generally recommended to include one for smoother processing and to ensure accurate capture of bibliographic information.

To learn more:

• Application Data Sheet
• ADS
• pre-AIA
• patent application
• bibliographic information

The United States Patent and Trademark Office (USPTO) does not require proof of authority to be filed by a legal representative of a deceased or incapacitated inventor. MPEP 409.01(b) states:

“Proof of authority of the legal representative of a deceased or incapacitated inventor is not required.”

However, it’s important to note that while the USPTO doesn’t require this proof, the legal representative should ensure they are properly acting in such a capacity. The MPEP advises:

“Although the Office does not require proof of authority to be filed, any person acting as a legal representative of a deceased or incapacitated inventor should ensure that he or she is properly acting in such a capacity.”

This means that while formal proof isn’t needed for USPTO purposes, the legal representative should be prepared to demonstrate their authority if challenged in other legal contexts.

To learn more:

• legal representative
• proof of authority
• deceased inventor
• incapacitated inventor
• pre-AIA

For applications filed on or after September 16, 2012, citizenship information is no longer required. The MPEP states:

“For applications filed on or after September 16, 2012, the citizenship of the inventor is no longer required by 35 U.S.C. 115 or 37 CFR 1.63.”

However, for applications filed before September 16, 2012, citizenship information was required under pre-AIA 35 U.S.C. 115.

To learn more:

• Citizenship
• Patent Application
• Inventor Information
• AIA
• Pre-AIA

Handling changes in inventorship in a continuing application depends on the filing date of the application and the nature of the change. Here are the key points:

1. For applications filed on or after September 16, 2012:
   • Inventorship is determined by the Application Data Sheet (ADS) if filed before or with the oath/declaration copy.
   • If no ADS is filed, inventorship is based on the oath/declaration copy from the earlier application.
   • New joint inventors must provide a new oath or declaration.
2. For applications filed before September 16, 2012:
   • To remove an inventor, file a copy of the prior oath/declaration with a statement requesting deletion of the non-inventor’s name.
   • Alternatively, file a new oath/declaration with the correct inventive entity.
   • For continuation-in-part applications, a new oath/declaration is typically required.

According to MPEP 602.05(b): If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(b), the continuation or divisional application may either be filed (A) with a copy of an oath or declaration from a prior application and a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application, or (B) with a newly executed oath or declaration naming the correct inventive entity.

Always ensure compliance with the specific requirements based on your application’s filing date and type.

To learn more:

• inventorship changes
• continuing application
• oath
• declaration
• AIA
• pre-AIA

The initial ownership of a patent depends on the filing date of the application. For applications filed on or after September 16, 2012, the MPEP states:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a).’

For applications filed before September 16, 2012:

‘For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This distinction is important for determining the initial owner of a patent or patent application.

The processing of a pre-AIA 37 CFR 1.47 application involves several steps:

1. A filing date is assigned if the application meets the requirements of 37 CFR 1.53(b).
2. A filing receipt is sent to the applicant.
3. The application or an electronic message about the petition is forwarded to the Office of Petitions.
4. If the papers are found acceptable, the Office of Petitions enters a decision in the file.
5. A notice is published in the Official Gazette with application details.
6. The USPTO notifies the nonsigning inventor(s) or legal representative(s) by letter.

As stated in the MPEP, When papers deposited pursuant to pre-AIA 37 CFR 1.47 are found acceptable, the Office of Petitions enters a decision to that effect in the file. A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s).

To learn more:

• pre-AIA
• 37 CFR 1.47
• patent application processing
• Office of Petitions
• Official Gazette

To learn more:

• 37 CFR 1.47

For applications filed before September 16, 2012 (pre-AIA applications), the USPTO has specific guidelines for handling inconsistencies between the Application Data Sheet (ADS) and other documents. According to MPEP 601.05(b):

If an ADS is inconsistent with the information provided in another document that was submitted at the same time or previous to the ADS submission, the ADS will control.

However, there are exceptions to this rule:

• Inventorship: The ADS does not control if it’s inconsistent with the inventorship set forth in an executed oath or declaration.
• Correspondence address: A clear direction to use a different address will override the ADS.
• Small entity status: Any small entity assertion or claim will control over the ADS.

It’s crucial for applicants to ensure consistency across all application documents to avoid potential issues during the examination process.

To learn more:

• ADS
• Inconsistencies
• Pre-AIA
• Patent Application

The guidance in MPEP 409.03(f) specifically addresses the issue of continuation-in-part (CIP) applications in relation to assignments. According to MPEP 409.03(f):

“An assignment of an application and any ‘reissue, division, or continuation of said application’ does not itself establish an assignment of a continuation-in-part application. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956).”

This means that even if an original application has been assigned, and that assignment includes language covering continuations and divisions, it does not automatically cover a continuation-in-part application. This is because a CIP application, by definition, contains new matter not present in the original application.

When dealing with a CIP application under pre-AIA 37 CFR 1.47(b), applicants need to ensure that the assignment or proof of proprietary interest specifically covers the new matter included in the CIP. A new assignment or demonstration of proprietary interest may be necessary for the portions of the CIP that were not present in the original application.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• continuation-in-part
• patent application
• assignment

To learn more:

• 37 CFR 1.47(b)

The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change:

‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’

This change allows assignees of the entire interest to take a more active role in patent prosecution by becoming the applicant. The AIA aimed to modernize the U.S. patent system and align it more closely with international practices.

For more detailed information on how the AIA affects assignee rights, refer to MPEP § 325 for applications filed on or after September 16, 2012.

When an inventor becomes legally incapacitated before filing a patent application and executing the required oath or declaration, a legal representative must be appointed to act on their behalf. According to 37 CFR 1.43 (pre-AIA):

“In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.”

The legal representative, typically appointed by a court of competent jurisdiction, can then execute the oath or declaration and proceed with the patent application process on behalf of the incapacitated inventor.

To learn more:

• legal incapacitation
• legal representative
• patent application
• pre-AIA

In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios:

1. New power of attorney without explicit revocation: “When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.”
2. Assignee filing new power of attorney: “If the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee.”
3. Change in Customer Number: “If a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second.”

In all these cases, the most recently filed power of attorney will control, effectively revoking or replacing the previous ones.

To learn more:

• power of attorney
• revocation
• pre-AIA
• customer number

For pre-AIA applications, the Application Data Sheet (ADS) plays a crucial role in establishing priority claims:

1. For domestic priority: MPEP 601.05(b) states, “Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120.” This means that including domestic priority information in the ADS satisfies the requirement for a specific reference to earlier filed applications.

2. For foreign priority: The MPEP notes, “Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55.”

In both cases, including priority information in the ADS eliminates the need to make these claims elsewhere in the application, such as in the specification.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Priority Claims
• Domestic Priority
• Foreign Priority

To file an application under pre-AIA 37 CFR 1.47(b), an applicant must demonstrate a proprietary interest in the subject matter of the application. The MPEP outlines three ways to establish this:

1. Show that the invention has been assigned to the applicant
2. Provide evidence that the inventor has agreed in writing to assign the invention to the applicant
3. Otherwise demonstrate a proprietary interest in the subject matter of the application

The MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application.”

For more detailed information on demonstrating proprietary interest, refer to MPEP § 409.03(f).

To learn more:

• pre-AIA
• patent application
• proprietary interest
• assignment

In pre-AIA patent applications (filed before September 16, 2012), a power of attorney given by the assignee of the entire interest has significant implications for previous powers of attorney. As stated in the MPEP:

A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in pre-AIA 37 CFR 3.71 and pre-AIA 37 CFR 3.73(b).

This means that when the assignee of the entire interest files a new power of attorney, it effectively cancels all previous powers of attorney given by the applicant or any prior assignees. However, the assignee must properly establish their right to take action in the application according to the relevant regulations.

To learn more:

• power of attorney
• patent application
• pre-AIA
• assignee
• revocation

The first inventor to file provisions that took effect on 3/16/2013 require additional statements for certain “transition” applications:

– Transition applications are those filed on or after 3/16/2013 that claim priority to an application filed before 3/16/2013.
– If a transition application ever contained a claim having an effective filing date on or after 3/16/2013, a statement to that effect is required within the later of 4 months from the actual filing date, 4 months from national stage entry, 16 months from the prior application, or the date the claim was first presented.
– This statement requirement does not apply if the application only claims priority to applications filed on or after 3/16/2013, or if the applicants reasonably believe the application never contained such a claim.

See MPEP 210 and MPEP 2159 for more details.

The first inventor to file provisions of the America Invents Act (AIA) have significant implications for priority and benefit claims, particularly for applications filed on or after March 16, 2013. Key points include:

1. The effective filing date of each claimed invention determines whether an application is subject to examination under AIA or pre-AIA 35 U.S.C. 102 and 103.
2. Applications that contain or contained at any time a claim with an effective filing date on or after March 16, 2013, are subject to the AIA version of 35 U.S.C. 102 and 103.
3. Applications that claim priority to or benefit of a pre-AIA application may be subject to additional requirements.

As stated in the MPEP: These provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time— (A) a claim to a claimed invention that has an effective filing date as defined under section 100(i) of title 35, United States Code, that is on or after March 16, 2013; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim. (MPEP 210)

For transition applications (those filed on or after March 16, 2013, that claim priority to or benefit of a pre-AIA application), applicants may need to provide a statement regarding the presence of claims with an effective filing date on or after March 16, 2013. This requirement is outlined in 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6).

For more information on effective filing date, visit: effective filing date.

For more information on first inventor to file, visit: first inventor to file.

For more information on pre-AIA, visit: pre-AIA.

For more information on transition applications, visit: transition applications.

To prove an invention has been assigned in a pre-AIA 37 CFR 1.47(b) application, you must submit the following:

• A copy of the assignment in English
• A statement under pre-AIA 37 CFR 3.73(b) by the assignee

According to MPEP 409.03(f):

“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant. A statement under pre-AIA 37 CFR 3.73(b) by the assignee must also be submitted (see MPEP § 324).”

It’s important to note that the assignment must specifically cover the invention described in the application. General assignments may not be sufficient.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• assignment
• patent application
• proof of ownership

To learn more:

• 37 CFR 1.47(b)

How did the ADS format differ for applications filed before September 16, 2012 compared to later applications?

The Application Data Sheet (ADS) format for applications filed before September 16, 2012 (pre-AIA) differed from the format used in later applications. According to MPEP 601.05(b):

For applications filed before September 16, 2012, the Office continued to use the ADS form PTO/SB/14 that was available prior to September 16, 2012.

Key differences in the pre-September 16, 2012 ADS format include:

• Form number: The pre-AIA ADS used form PTO/SB/14, while post-AIA applications use form PTO/AIA/14.
• Inventor information: The pre-AIA ADS didn’t require as detailed inventor information as the post-AIA version.
• Domestic benefit/Foreign priority: The format for claiming these was simpler in the pre-AIA ADS.
• Assignee information: The pre-AIA ADS had a different section for providing assignee information.
• Signature requirements: The pre-AIA ADS had different signature requirements compared to the post-AIA version.

It’s important to use the correct ADS form based on your application’s filing date to ensure compliance with USPTO requirements and proper processing of your application.

To learn more:

• Application Data Sheet
• ADS format
• pre-AIA
• post-AIA
• patent application

The process for changing the correspondence address in a patent application filed before September 16, 2012, depends on whether an oath or declaration has been filed:

• Before filing an oath or declaration: The correspondence address can be changed by the party who filed the application, including the inventor(s), any patent practitioner named in the transmittal papers, or the assignee who filed the application.
• After filing an oath or declaration: The correspondence address can be changed by a patent practitioner of record, an assignee as provided under pre-AIA 37 CFR 3.71(b), or all of the applicants, unless there’s an assignee of the entire interest who has taken action in the application.

As stated in MPEP 601.03(b): “Where a correspondence address has been established on filing of the application or changed pursuant to pre-AIA 37 CFR 1.33(a)(1) (prior to the filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors), that correspondence address remains in effect upon filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 and can only be subsequently changed pursuant to pre-AIA 37 CFR 1.33(a)(2).”

To learn more:

• correspondence address
• patent application
• pre-AIA
• oath
• declaration
• patent practitioner

How can an assignee establish the right to take action in a pre-AIA application?

For pre-AIA applications (filed before September 16, 2012), an assignee can establish the right to take action by:

1. Filing papers in the USPTO demonstrating the chain of title from the inventor to the assignee, or
2. Specifying in the papers requesting or taking action that action is being taken pursuant to a specific 37 CFR provision.

According to MPEP 324: “The assignee must establish its ownership of the property to the satisfaction of the Director. The chain of title from the inventor to the assignee must be clearly established.” This typically involves submitting assignment documents or other evidence of ownership to the USPTO.

For more information on assignee rights, visit: assignee rights.

For more information on pre-AIA, visit: pre-AIA.

For more information on USPTO procedures, visit: USPTO procedures.

For patent applications filed before September 16, 2012, an applicant can revoke a power of attorney using Form PTO/SB/81. According to MPEP 402.05(b), “Form PTO/SB/81 may be used to revoke a power of attorney in an application filed before September 16, 2012.” The revocation can be done at any stage of the proceedings by an applicant for patent or an assignee of the entire interest of the applicant.

It’s important to note that fewer than all of the applicants or assignees may revoke the power of attorney only upon showing sufficient cause and paying a petition fee. The patent practitioner will be notified of the revocation, and the notice will be mailed to the correspondence address for the application in effect before the revocation.

To learn more:

• power of attorney
• revocation
• pre-AIA
• patent application

If an applicant in a pre-AIA 37 CFR 1.47(b) application doesn’t have an assignment or agreement to assign, they can demonstrate sufficient proprietary interest by:

• Submitting a legal memorandum
• Providing an affidavit or declaration of firsthand knowledge
• Including copies of relevant statutes or court decisions (if non-U.S.)

MPEP 409.03(f) states:

“A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the pre-AIA 37 CFR 1.47(b) applicant.”

The legal memorandum should be prepared by an attorney familiar with the relevant jurisdiction’s laws. Supporting facts should be provided through affidavits or declarations from individuals with firsthand knowledge. For non-U.S. jurisdictions, copies of relevant statutes or court decisions (in English) should be included.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• proprietary interest
• patent application
• legal memorandum

To learn more:

• 37 CFR 1.47(b)

For pre-AIA applications, the resolution of inconsistencies between the Application Data Sheet (ADS) and other documents is governed by specific rules:

1. General rule: MPEP 601.05(b) states, “The latest submitted information will govern notwithstanding whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by an oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67, except as provided by pre-AIA 37 CFR 1.76(d)(3).”

2. Exception for inventor information: “The oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67 governs inconsistencies with the application data sheet in the naming of inventors and setting forth their citizenship.”

3. Correction process: If inconsistencies exist, a supplemental ADS should be submitted to conform the information with the correct data in other documents.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Inconsistencies
• Inventor Information

For continuation or divisional applications filed under 37 CFR 1.53(b) of an application previously accorded status under pre-AIA 37 CFR 1.47, the process is simplified. The MPEP states: In a continuation or divisional application filed under 37 CFR 1.53(b) of an application accorded status under pre-AIA 37 CFR 1.47, if a copy of a declaration from a prior application and a copy of a decision according status under pre-AIA 37 CFR 1.47 are filed as permitted by pre-AIA 37 CFR 1.63(d)(3)(i), the notice will not be repeated.

This means that if the proper documentation from the original application is provided, the USPTO won’t repeat the notification process for nonsigning inventors. This streamlines the application process for related applications.

To learn more:

• pre-AIA
• 37 CFR 1.47
• continuation application
• divisional application
• patent procedure

To learn more:

• 37 CFR 1.47

No, this specific requirement does not apply to all patent applications. The MPEP clearly states:

‘[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]’

This means that the requirement to provide the last known address of a nonsigning inventor is only applicable to pre-AIA applications filed before September 16, 2012, under 37 CFR 1.47. For applications filed on or after this date, different rules may apply, and applicants should consult the current USPTO guidelines or seek legal advice.

To learn more:

• pre-AIA
• AIA
• patent application dates
• 37 CFR 1.47

To learn more:

• 37 CFR 1.47

The use of a copy of an oath or declaration in a continuation-in-part (CIP) application depends on the filing date of the CIP application:

1. For CIP applications filed on or after September 16, 2012:
   • A copy of an oath or declaration from the prior application may be used.
   • However, the oath or declaration must comply with the requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012.
   • A new oath or declaration may be necessary if the prior application was filed before September 16, 2012.
2. For CIP applications filed before September 16, 2012:
   • Generally, a new oath or declaration is required.
   • The copy of the oath or declaration from the prior application is typically not sufficient due to the new matter introduced in a CIP.

According to MPEP 602.05(a): For applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64.

It’s important to ensure that the oath or declaration covers all the subject matter in the CIP application, including any new matter added.

To learn more:

• oath
• declaration
• continuation-in-part
• CIP
• AIA
• pre-AIA

Yes, heirs can apply for a patent on behalf of a deceased inventor under certain circumstances. According to MPEP 409.01(b):

“Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator.”

In such cases, the heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted pursuant to pre-AIA 37 CFR 1.63 and 1.64. This allows heirs to proceed with the patent application process when no formal legal representative has been appointed.

To learn more:

• heirs
• deceased inventor
• patent application
• pre-AIA

No, an inventor cannot authorize another individual to act as their agent to sign the application oath or declaration on their behalf. The MPEP is clear on this point, stating: “An inventor may not authorize another individual to act as his or her agent to sign the application oath or declaration on his or her behalf.”

This prohibition is supported by legal precedents, as the MPEP cites: “Staeger v. Commissioner, 189 USPQ 272 (D.D.C. 1976), In re Striker, 182 USPQ 507 (Comm’r Pat. 1973).” These cases reinforce the requirement for the inventor’s personal signature on the oath or declaration.

To learn more:

• pre-AIA
• patent application
• inventor authorization
• application oath

For applications filed before September 16, 2012 (pre-AIA applications), the Application Data Sheet (ADS) cannot be used to claim small entity status. According to MPEP 601.05(b):

The ADS cannot be used to make a small entity assertion, which must be done in a separate paper.

To claim small entity status in pre-AIA applications, applicants must submit a separate written assertion of entitlement to small entity status. This can be done through:

• A specific written assertion of entitlement to small entity status
• Payment of the small entity basic filing fee
• Submission of a small entity written assertion in a related application

It’s important to note that for applications filed on or after September 16, 2012, the rules regarding small entity status claims have changed, and the ADS can be used for this purpose in those later applications.

To learn more:

• ADS
• Small Entity Status
• Pre-AIA
• Patent Application

Yes, a patent application can be filed even if one joint inventor refuses to sign, provided certain conditions are met. According to MPEP 409.03(a):

“Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application ‘on behalf of’ themselves and on behalf of a joint inventor who ‘cannot be found or reached after diligent effort’ or who refuses to ‘join in an application.'”

To file the application, the available joint inventors must make an oath or declaration on their own behalf and on behalf of the nonsigning inventor. Additionally, proof must be provided that the nonsigning inventor refuses to execute the application papers. This process allows the patent application to proceed despite the refusal of one joint inventor to participate.

To learn more:

• joint inventors
• refusing inventor
• patent application
• pre-AIA

In a pre-AIA 37 CFR 1.47 application, a nonsigning inventor has limited rights regarding the power of attorney. According to MPEP 402.05(b):

A nonsigning inventor may subsequently join in a pre-AIA 37 CFR 1.47 application by submitting an oath or declaration under pre-AIA 37 CFR 1.63. However, even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the pre-AIA 37 CFR 1.47 applicant.

This means that while a nonsigning inventor can later join the application by submitting the required oath or declaration, they do not have the authority to unilaterally revoke or grant a power of attorney. Any such action would require the agreement of the original pre-AIA 37 CFR 1.47 applicant.

To learn more:

• power of attorney
• nonsigning inventor
• pre-AIA
• 37 CFR 1.47

To learn more:

• 37 CFR 1.47

Yes, a corporation can file a patent application under pre-AIA 37 CFR 1.47(b). The MPEP explicitly states that “Where a corporation is the pre-AIA 37 CFR 1.47(b) applicant, an officer (President, Vice-President, Secretary, Treasurer, or Chief Executive Officer) thereof should normally sign the necessary oath or declaration.”

Additionally, “A corporation may authorize any person, including an attorney or agent registered to practice before the U.S. Patent and Trademark Office, to sign the application oath or declaration on its behalf.” However, proper authorization or proof of authority may be required in such cases.

To learn more:

• pre-AIA
• patent application
• corporation
• corporate officers

Yes, there are exceptions to the requirement for all applicants to sign power of attorney documents. The MPEP provides one specific exception:

“In an application filed under pre-AIA 37 CFR 1.47(a), an assignee of the entire interest of the available inventors (i.e., the applicant) who has signed the declaration may appoint or revoke a power of attorney without a petition under 37 CFR 1.36(a) or 1.183.”

This exception applies to applications filed before the America Invents Act (AIA) under specific circumstances. However, it’s important to note that this exception does not apply in all cases. The MPEP also states:

“However, in applications accepted under pre-AIA 37 CFR 1.47, such a petition under 37 CFR 1.36(a) or 1.183 submitted by a previously nonsigning inventor who has now joined in the application will not be granted.”

For more information on these exceptions, refer to MPEP § 402.07 and MPEP § 409.03(i).

To learn more:

• Power of Attorney
• Patent Application
• USPTO
• Pre-AIA
• Exceptions

For continuation or divisional applications filed before September 16, 2012, a new oath or declaration is generally not required if certain conditions are met. According to pre-AIA 37 CFR 1.63(d):

A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:

• The prior nonprovisional application contained a proper oath or declaration
• The continuation or divisional application was filed by all or fewer than all inventors named in the prior application
• The specification and drawings contain no new matter
• A copy of the executed oath or declaration from the prior application is submitted

However, a new oath or declaration is required if naming an inventor not named in the prior application. The MPEP states: A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.

To learn more:

• continuation application
• divisional application
• oath
• declaration
• pre-AIA

In patent applications filed before September 16, 2012, the power of attorney can be signed by either the inventor(s) or the assignee of the entire interest. However, the MPEP recommends that the assignee sign the power of attorney when one exists. As stated in the MPEP:

While a power of attorney may be signed by the inventor(s), the power of attorney should be signed by the assignee of the entire interest where one exists. Otherwise, the assignee may be paying the bill, while the inventor is providing the power of attorney, thereby possibly raising an issue as to who is the practitioner’s client.

This recommendation aims to avoid potential conflicts and ensure clear representation in cases where the relationship between the assignee and inventors may deteriorate.

To learn more:

• power of attorney
• patent application
• pre-AIA
• assignee
• inventor

Under pre-AIA 37 CFR 1.47(b), the term ‘person’ is broadly interpreted. The MPEP states that “The word ‘person’ has been construed by the U.S. Patent and Trademark Office to include juristic entities, such as a corporation.” This means that both individuals and legal entities can potentially file an application under this provision, provided they meet the other requirements.

To learn more:

• pre-AIA
• patent application
• juristic entities
• corporation

For patent applications filed before September 16, 2012, the oath or declaration can be administered by various authorized individuals, depending on the location. According to pre-AIA 35 U.S.C. 115:

• Within the United States: Any person authorized by law to administer oaths
• In a foreign country:
  • A diplomatic or consular officer of the United States authorized to administer oaths
  • An officer having an official seal and authorized to administer oaths in the foreign country, whose authority is proved by a certificate of a U.S. diplomatic or consular officer
  • An official designated by a foreign country that, by treaty or convention, accords like effect to apostilles of designated officials in the United States

The law states: Such oath is valid if it complies with the laws of the state or country where made. This provision ensures flexibility in oath administration while maintaining legal validity across different jurisdictions.

To learn more:

• oath administration
• declaration
• patent application
• pre-AIA
• foreign country

For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if:

• An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application
• A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed

However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).

For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).

What types of evidence can be used to establish assignee ownership in pre-AIA applications?

For pre-AIA applications (filed before September 16, 2012), assignees can use various types of evidence to establish ownership, including:

• Assignment documents
• Corporate merger documentation
• Patent purchase agreements
• Court orders
• Joint research agreements

The MPEP 324 states: “The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee.” This means that in addition to proving ownership, the assignee must also demonstrate the authority of the person acting on their behalf.

For more information on assignee ownership, visit: assignee ownership.

For more information on pre-AIA, visit: pre-AIA.

For more information on USPTO procedures, visit: USPTO procedures.

If a legal representative of a deceased inventor refuses to make application, the procedure depends on when the application was filed:

• For applications filed before September 16, 2012: Pre-AIA 37 CFR 1.47 applies. The MPEP states: pre-AIA 37 CFR 1.47 does apply where a known legal representative of a deceased inventor cannot be found or reached after diligent effort, or refuses to make application.
• In this case, you should:
  1. Document the refusal and the efforts made to reach the legal representative.
  2. Provide the last known address of the legal representative, as per MPEP § 409.03(e).
  3. File the application under pre-AIA 37 CFR 1.47, explaining the situation.
• For applications filed on or after September 16, 2012: Different procedures apply, which are not covered in this specific MPEP section. Consult the current USPTO regulations and guidelines for the appropriate course of action.

It’s important to note that these procedures are specific to cases where there is a known legal representative who is refusing to cooperate. Different rules may apply in other scenarios involving deceased inventors.

To learn more:

• Legal Representative
• Deceased Inventor
• Patent Application
• Refusal to Cooperate
• Pre-AIA

For a pre-AIA 37 CFR 1.47(b) application, the applicant must prove one of the following:

• The invention has been assigned to the applicant
• The inventor has agreed in writing to assign the invention to the applicant
• The applicant otherwise has sufficient proprietary interest in the subject matter to justify filing the application

As stated in MPEP 409.03(f):

“When an application is deposited pursuant to pre-AIA 37 CFR 1.47(b), the pre-AIA 37 CFR 1.47(b) applicant must prove that (A) the invention has been assigned to the applicant, or (B) the inventor has agreed in writing to assign the invention to the applicant, or (C) the applicant otherwise has sufficient proprietary interest in the subject matter to justify the filing of the application.”

The specific documentation required depends on which of these conditions is being met.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• proprietary interest
• patent application
• assignment

To learn more:

• 37 CFR 1.47(b)

When filing under pre-AIA 37 CFR 1.47(b), an applicant must prove that the filing of the application is necessary for specific reasons. The MPEP outlines two primary justifications:

1. To preserve the rights of the parties
2. To prevent irreparable damage

Specifically, the MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must prove that the filing of the application is necessary (1) to preserve the rights of the parties or (2) to prevent irreparable damage.”

This requirement ensures that the use of pre-AIA 37 CFR 1.47(b) is justified and not merely a matter of convenience. For more detailed information on proving necessity, refer to MPEP § 409.03(g).

To learn more:

• pre-AIA
• patent application
• filing necessity
• irreparable damage

The transition application statement is a requirement for certain applications that bridge the pre-AIA and AIA periods. Here are the key points:

• It applies to nonprovisional applications filed on or after March 16, 2013, that claim priority to a foreign application filed before March 16, 2013.
• The statement is required if the application contains or contained a claim to an invention with an effective filing date on or after March 16, 2013.
• The applicant must provide this statement within a specified time period.
• International design applications are exempt from this requirement.

As stated in the MPEP: If a nonprovisional application filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. This requirement helps the USPTO determine which law applies to the application.

To learn more:

• transition application statement
• AIA
• pre-AIA
• foreign priority
• effective filing date

The date September 16, 2012, is significant because it marks a change in the applicability of certain patent application procedures. As noted in MPEP 409.03(a):

“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]”

This date corresponds to the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. For applications filed on or after this date, different rules and procedures apply regarding joint inventorship and the handling of situations where not all inventors are available or willing to sign the application. It’s crucial for applicants to be aware of which set of rules applies to their application based on the filing date.

To learn more:

• joint inventors
• patent application
• America Invents Act
• pre-AIA
• AIA

The date September 16, 2012, is significant in patent applications involving deceased inventors because it marks a change in the applicable regulations. The MPEP section 409.03(c) states:

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]

This means:

• For applications filed before September 16, 2012: The procedures outlined in pre-AIA 37 CFR 1.47 apply when dealing with unavailable legal representatives of deceased inventors.
• For applications filed on or after September 16, 2012: Different regulations and procedures apply, which are not covered in this specific MPEP section.

This date coincides with the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. Patent applicants and attorneys should be aware of these changes and apply the appropriate procedures based on their application’s filing date.

To learn more:

• September 16 2012
• America Invents Act
• Pre-AIA
• Post-AIA
• Patent Application

March 16, 2013 is a crucial date in U.S. patent law due to the implementation of the America Invents Act (AIA). This date marks the transition from the pre-AIA first-to-invent system to the AIA first-inventor-to-file system. The significance includes:

• Applications filed on or after this date are generally subject to AIA provisions
• The effective filing date of claimed inventions determines which law applies
• Transition applications may require special statements
• Different examination standards may apply based on the effective filing date

The MPEP states: “The first inventor to file provisions of Public Law 112-29, sec. 3, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective March 16, 2013. These provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time— (A) a claim to a claimed invention that has an effective filing date as defined under section 100(i) of title 35, United States Code, that is on or after March 16, 2013; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.”

Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):

“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”

This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.

When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.

To learn more:

• pre-AIA
• 35 U.S.C. 118
• proprietary interest
• patent application
• assignment

To learn more:

• 35 U.S.C. 118

In applications filed pursuant to pre-AIA 37 CFR 1.47, it is mandatory to state the last known address of the nonsigning inventor. The MPEP states:

‘An application filed pursuant to pre-AIA 37 CFR 1.47 must state the last known address of the nonsigning inventor.’

This requirement ensures that the USPTO can attempt to contact the nonsigning inventor regarding the application filed on their behalf.

To learn more:

• pre-AIA
• 37 CFR 1.47
• nonsigning inventor
• last known address

To learn more:

• 37 CFR 1.47

Pre-AIA 37 CFR 1.47(b) allows a person with a demonstrated proprietary interest to file a patent application on behalf of an inventor who is unavailable. According to the MPEP, this provision is applicable “when no inventor is available to make application” and permits filing “on behalf of and as agent for” an inventor who “cannot be found or reached after diligent effort” or who refuses to sign the application oath or declaration.

It’s important to note that this provision is not applicable to applications filed on or after September 16, 2012.

To learn more:

• pre-AIA
• patent application
• unavailable inventor
• proprietary interest

While restoration of the right of priority allows for valid priority claims up to 14 months from the earliest priority date (or 8 months for design applications), pre-AIA applications are still subject to the 12-month statutory bar under pre-AIA 35 U.S.C. 102(b) and (d). MPEP 213.03 clarifies: ‘It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date.’

This means that while the priority claim may be valid, the earlier filed foreign application could still be used as prior art against a pre-AIA application if it was published more than one year before the U.S. filing date.

For more information on pre-AIA, visit: pre-AIA.

The main difference in power of attorney revocation between pre-AIA (before September 16, 2012) and post-AIA (on or after September 16, 2012) applications lies in who can sign the power of attorney and the process for revocation:

• Post-AIA (on or after September 16, 2012): The power of attorney must be signed by the applicant or patent owner. For an assignee to revoke a power of attorney, they must first become the applicant under 37 CFR 1.46(c).
• Pre-AIA (before September 16, 2012): The assignee of record of the entire interest can revoke the power of attorney of the applicant directly, provided they establish their right to take action under pre-AIA 37 CFR 3.73(b).

This change reflects the shift in USPTO regulations to give more control to the applicant in post-AIA applications, while pre-AIA rules allowed more direct action by assignees.

To learn more:

• pre-AIA
• post-AIA
• power of attorney
• assignee
• patent application
• revocation

The America Invents Act (AIA) brought significant changes to patent law, including rules regarding patent ownership. The key differences between pre-AIA (before September 16, 2012) and AIA (on or after September 16, 2012) patent ownership rules are:

1. Applicability: Pre-AIA rules apply to applications filed before September 16, 2012, while AIA rules apply to applications filed on or after that date.
2. Juristic Entity Representation: Under AIA rules, juristic entities (e.g., corporations) must be represented by a patent practitioner for most actions. Pre-AIA rules allowed juristic entities to take certain actions without representation.
3. Ownership Establishment: The process for establishing ownership is slightly different, with AIA applications following 37 CFR 3.73 and pre-AIA applications following pre-AIA 37 CFR 3.73(b).
4. Inventor’s Oath or Declaration: AIA introduced changes to the inventor’s oath or declaration requirements, which can affect how assignees interact with the patent application process.

According to MPEP 324: [Editor Note: See MPEP § 325 for establishing the right of assignee to take action in an application filed on or after September 16, 2012.] This indicates that different sections of the MPEP should be consulted depending on the application’s filing date.

For more information on pre-AIA, visit: pre-AIA.

For more information on USPTO procedures, visit: USPTO procedures.

What is the difference between pre-AIA and AIA applications regarding assignee filing?

The key difference between pre-AIA (America Invents Act) and AIA applications regarding assignee filing lies in the requirements for establishing the right of an assignee to take action:

• Pre-AIA applications (filed before September 16, 2012): The assignee must establish their right to take action by filing evidence of ownership in the USPTO.
• AIA applications (filed on or after September 16, 2012): The assignee can simply be named as the applicant, eliminating the need to file evidence of ownership.

As stated in MPEP 324: “For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment.”

For more information on pre-AIA, visit: pre-AIA.

MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:

• Assignment: A completed transfer of rights in the invention.
• Agreement to Assign: A promise to transfer rights in the future, often conditional.

For an assignment, MPEP 409.03(f) states:

“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”

For an agreement to assign:

“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”

Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• assignment
• agreement to assign
• proprietary interest

To learn more:

• 37 CFR 1.47(b)

Irreparable damage, in the context of patent applications, refers to a situation where a filing date is crucial to preserve the rights of an applicant or to prevent severe harm. According to MPEP 409.03(g):

Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.

This means that an applicant can demonstrate irreparable damage by providing a statement explaining why obtaining a specific filing date is essential to protect their rights or avoid significant harm.

To learn more:

• irreparable damage
• patent application
• filing date
• pre-AIA
• 37 CFR 1.47(b)

To learn more:

• 37 CFR 1.47(b)

An Application Data Sheet (ADS) is a voluntary submission for patent applications filed before September 16, 2012, that contains bibliographic data arranged in a specific format. According to MPEP 601.05(b), “An application data sheet is a sheet or sheets, that may be voluntarily submitted in either provisional or nonprovisional applications, which contains bibliographic data, arranged in a format specified by the Office.” The ADS becomes part of the application and must be titled “Application Data Sheet.”

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Patent Application
• Bibliographic Data

A transition application under the America Invents Act (AIA) is:

• A nonprovisional application filed on or after March 16, 2013
• That claims foreign priority to, or domestic benefit of, an application filed before March 16, 2013

Transition applications can be either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications, depending on the effective filing date of the claimed invention(s).

The MPEP states: “Transition applications are nonprovisional applications that: (A) are filed on or after March 16, 2013; and (B) claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013. Transition applications are either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications depending on the effective filing date of the claimed invention(s).”

A pre-AIA 37 CFR 1.47 application is a patent application filed before September 16, 2012, where not all inventors have signed the application. This provision allows for the filing of a patent application when an inventor cannot be reached or refuses to sign.

According to the MPEP, A filing date is assigned to an application deposited pursuant to pre-AIA 37 CFR 1.47 provided the requirements of 37 CFR 1.53(b) are met. This means that as long as the basic filing requirements are fulfilled, the application can be processed even without all inventors’ signatures.

To learn more:

• pre-AIA
• 37 CFR 1.47
• patent application
• inventor signature
• filing date

To learn more:

• 37 CFR 1.47

For applications filed before September 16, 2012, the Application Data Sheet (ADS) should include the following information:

• Applicant information
• Correspondence address
• Application information
• Representative information
• Domestic priority information
• Foreign priority information
• Assignee information

As stated in MPEP 601.05(b): The ADS must include all of the section headings listed in 37 CFR 1.76(b), even if no information is being provided for some of the sections. This ensures consistency and completeness in the application filing process.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Patent Application

For patent applications filed before September 16, 2012, the oath or declaration must include specific information about foreign applications if not provided in an application data sheet. According to pre-AIA 37 CFR 1.63(c)(2), the oath or declaration must identify:

• Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made
• Any foreign application having a filing date before that of the application on which priority is claimed

The MPEP elaborates: The applicant is required to recite all foreign applications filed prior to the application on which priority is claimed. It is required to give the foreign application number and name of the country or office in which filed, as well as the filing date of each foreign application to which priority is claimed.

This information is crucial for establishing priority claims and ensuring compliance with patent law requirements regarding prior foreign filings.

To learn more:

• foreign applications
• oath
• declaration
• priority claim
• pre-AIA

When an application is executed by someone other than the inventor under pre-AIA 37 CFR 1.47(b), the declaration must include specific information about the non-signing inventor. According to the MPEP, the declaration must state:

• The full name of the non-signing inventor
• The residence of the non-signing inventor
• The post office address of the non-signing inventor
• The citizenship of the non-signing inventor

Additionally, “the title or position of the person signing must be stated if signing on behalf of a corporation under pre-AIA 37 CFR 1.47(b).” This ensures that the person signing has the authority to do so on behalf of the corporation.

To learn more:

• pre-AIA
• patent application
• declaration requirements
• non-signing inventor

When a pre-AIA 37 CFR 1.47 application is found acceptable, certain information is published in the Official Gazette. According to the MPEP: A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s).

This publication serves several purposes:

• It provides public notice of the application’s existence.
• It identifies the nonsigning inventors, which may be important for legal or intellectual property reasons.
• It establishes a clear record of the application’s status under pre-AIA 37 CFR 1.47.

This publication is an important step in the processing of these special applications and ensures transparency in the patent application process.

To learn more:

• pre-AIA
• 37 CFR 1.47
• Official Gazette
• patent publication
• nonsigning inventors

To learn more:

• 37 CFR 1.47

An Application Data Sheet (ADS) for pre-AIA applications includes several categories of bibliographic information:

• Applicant information (name, residence, mailing address, and citizenship)
• Correspondence information
• Application information (title, classification, drawings, etc.)
• Representative information
• Domestic priority information
• Foreign priority information
• Assignee information

As stated in MPEP 601.05(b), “Bibliographic data as used in paragraph (a) of this section includes: (1) Applicant information… (2) Correspondence information… (3) Application information… (4) Representative information… (5) Domestic priority information… (6) Foreign priority information… (7) Assignee information…”

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Bibliographic Data
• Patent Application Information

When an inventor is added to a pre-AIA patent application through a 37 CFR 1.48 request, it can affect the existing power of attorney. According to MPEP 402.05(b):

If the power of attorney was granted by the originally named inventive entity and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request.

This means that if a new inventor is added and doesn’t provide a power of attorney consistent with the original one, the original power of attorney is lost. However, this doesn’t prevent a practitioner from acting under 37 CFR 1.34, which allows for acting in a representative capacity.

To learn more:

• power of attorney
• added inventor
• pre-AIA
• 37 CFR 1.48

To learn more:

• 37 CFR 1.48

The death of an inventor (or one of the joint inventors) typically terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012, unless the power of attorney is coupled with an interest (e.g., the patent practitioner is an assignee or part-assignee). As stated in MPEP 409.01(b):

“Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012.”

In such cases, a new power of attorney from the heirs, administrators, executors, or assignees is necessary if the deceased inventor was the sole inventor or if all powers of attorney in the application have been terminated.

To learn more:

• power of attorney
• deceased inventor
• patent application
• pre-AIA

In a pre-AIA 37 CFR 1.47 application, nonsigning inventors are notified of the application filing. The MPEP states: The U.S. Patent and Trademark Office will notify the nonsigning inventor(s) or, if the inventor is deceased, the legal representative(s), of the filing of an application under pre-AIA 37 CFR 1.47 by sending a letter to the last known address of the nonsigning inventor(s) or legal representative(s).

This notification process ensures that all inventors, even those who didn’t sign the application, are aware of the patent application filed using their invention. It’s important to note that this notification is a courtesy and doesn’t require a response from the nonsigning inventor for the application to proceed.

To learn more:

• pre-AIA
• 37 CFR 1.47
• nonsigning inventors
• USPTO notification
• patent application

To learn more:

• 37 CFR 1.47

When an inventor dies before filing a patent application, the legal representative (executor, administrator, etc.) of the deceased inventor can make the necessary oath or declaration and apply for the patent. This is specified in 37 CFR 1.42 (pre-AIA), which states:

“In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent.”

The legal representative must comply with the same requirements and conditions that would have been applicable to the inventor.

To learn more:

• deceased inventor
• legal representative
• patent application
• pre-AIA

If an inventor dies after filing a patent application but before the patent is granted, the process can still continue. According to 37 CFR 1.42 (pre-AIA):

“Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.”

However, MPEP 409.01(b) clarifies that the intervention of the executor or administrator is not compulsory:

“When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.”

This means that while it’s advisable for the legal representative to intervene, the patent application can still proceed to allowance or issuance even without such intervention.

To learn more:

• deceased inventor
• patent application
• patent issuance
• legal representative
• pre-AIA

When the legal representative of a deceased inventor is unavailable, the process depends on whether the application was filed before or after September 16, 2012:

• For applications filed before September 16, 2012: If the legal representative cannot be found or reached after diligent effort, or refuses to make application, pre-AIA 37 CFR 1.47 applies. In such cases, the last known address of the legal representative must be provided.
• For applications filed on or after September 16, 2012: The provisions of pre-AIA 37 CFR 1.47 do not apply. Instead, refer to current USPTO regulations and procedures.

It’s important to note that pre-AIA 37 CFR 1.47 is not an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 for deceased inventors. As stated in the MPEP, Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor.

To learn more:

• Deceased Inventor
• Legal Representative
• Patent Application
• Pre-AIA
• Post-AIA

For patent applications filed before September 16, 2012, the USPTO recommends specific forms for powers of attorney. According to the MPEP:

Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms) should be used for powers of attorney in applications filed before September 16, 2012.

Additionally, for patents that issued from applications filed before September 16, 2012, Form PTO/SB/81A may be used. It’s important to note that the USPTO no longer recommends or provides combined declaration and power of attorney forms. Practitioners should use separate forms for declarations and powers of attorney.

To learn more:

• power of attorney
• patent application
• pre-AIA
• USPTO forms

For pre-AIA applications (filed before September 16, 2012), the MPEP mentions a specific form that can be used by assignees to revoke a power of attorney and appoint a new one:

Form PTO/SB/80 may be used by an assignee of the entire interest of the applicant to revoke a power of attorney and appoint a new power of attorney.

The process involves:

• The assignee signing the power of attorney (Form PTO/SB/80)
• Either the assignee or the newly appointed practitioner signing a statement under pre-AIA 37 CFR 3.73(b)

Additionally, Form PTO/SB/96 or an equivalent can be used for the Statement Under pre-AIA 37 CFR 3.73(b). For details on who can sign this statement, refer to MPEP § 324, subsection V.

To learn more:

• pre-AIA
• power of attorney
• assignee
• revocation
• USPTO forms

To demonstrate an agreement to assign in a pre-AIA 37 CFR 1.47(b) application, you should provide:

• A copy of the written agreement to assign the invention
• If the agreement is conditional, a statement of facts showing the conditions have been met

MPEP 409.03(f) states:

“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted. If an agreement to assign is dependent on certain specified conditions being met, it must be established by a statement of facts by someone with first hand knowledge of the circumstances in which those conditions have been met.”

A common example is an employment agreement. In such cases, you must provide evidence that the invention was made during the course of employment, typically through a statement from someone with firsthand knowledge of the circumstances.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• agreement to assign
• patent application
• employment agreement

To learn more:

• 37 CFR 1.47(b)

For applications filed before September 16, 2012, the process for an assignee to revoke a power of attorney is different. According to the MPEP:

In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an ‘irrevocable’ right to prosecute the application had been given as in some government owned applications.

The assignee must establish their right to take action as provided in pre-AIA 37 CFR 3.73(b). Once this is done, a power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees.

Form PTO/SB/80 can be used by an assignee to revoke a power of attorney and appoint a new one. The assignee would sign the power of attorney, and either the assignee or the newly appointed practitioner would sign a statement under pre-AIA 37 CFR 3.73(b).

To learn more:

• pre-AIA
• power of attorney
• assignee
• patent application
• revocation

For pre-AIA applications, submitting a supplemental Application Data Sheet (ADS) must follow specific requirements:

1. Timing: MPEP 601.05(b) states, “Supplemental application data sheets may be subsequently supplied prior to payment of the issue fee to either correct or update information in a previously submitted application data sheet, or an oath or declaration under pre-AIA 37 CFR 1.63 or 1.67.”

2. Title: The supplemental ADS must be titled “Supplemental Application Data Sheet.”

3. Content: It must contain all section headings listed in 37 CFR 1.76(b) with all appropriate data for each heading.

4. Format: The supplemental ADS must indicate changes, “preferably with insertions or additions indicated by underlining, and deletions, with or without replacement data, indicated by strike-through or brackets.”

5. Signature: The supplemental ADS must be signed as it is considered a paper filed in the application.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Supplemental ADS
• Patent Application

When filing a patent application with at least one unavailable joint inventor under pre-AIA 37 CFR 1.47(a), the following requirements must be met:

• All available joint inventors must make an oath or declaration for themselves and on behalf of the nonsigning inventor.
• Proof must be provided that the nonsigning inventor cannot be found or refuses to execute the application.
• The last known address of the nonsigning inventor must be stated.

As stated in MPEP 409.03(a):

“An application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements: (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 […] and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64.”

It’s important to note that this section is not applicable to applications filed on or after September 16, 2012.

To learn more:

• joint inventors
• unavailable inventor
• patent application
• pre-AIA
• oath
• declaration

For applications filed before September 16, 2012, the requirements for an inventor’s oath or declaration are governed by pre-AIA 37 CFR 1.63. The oath or declaration must:

1. Be executed (signed) in accordance with pre-AIA 37 CFR 1.66 or pre-AIA 37 CFR 1.68.
2. Identify each inventor by full name, including family name and at least one given name, without abbreviation.
3. Identify the country of citizenship of each inventor.
4. State that the person making the oath or declaration believes the named inventor(s) to be the original and first inventor(s) of the subject matter claimed.
5. State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims.
6. Acknowledge the duty to disclose to the Office all information known to be material to patentability as defined in 37 CFR 1.56.

These requirements are different from those for applications filed on or after September 16, 2012, and it’s important to use the correct version of the oath or declaration based on the application’s filing date.

To learn more:

• Pre-AIA
• Inventor’s oath
• Declaration
• Patent application
• Legal requirements

The rules regarding who can be a patent applicant changed significantly for applications filed on or after September 16, 2012. MPEP § 605 outlines these differences:

For applications filed on or after September 16, 2012:

“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”

For applications filed before September 16, 2012:

“For applications filed before September 16, 2012, a person to whom the inventor assigned an invention could file and prosecute an application for patent, but the inventor is considered the applicant.”

The key differences are:

• Pre-AIA: Only the inventor could be listed as the applicant, even if the application was filed by an assignee.
• Post-AIA: Assignees, those obligated to assign, or those with sufficient proprietary interest can be listed as the applicant.

For more detailed information, refer to MPEP § 605.01 for post-AIA applications and MPEP § 605.02 for pre-AIA applications.

To learn more:

• patent applicant rules
• pre-AIA
• post-AIA
• patent law changes
• America Invents Act

What are the consequences of not submitting an Application Data Sheet (ADS) in applications filed before September 16, 2012?

For applications filed before September 16, 2012, submitting an Application Data Sheet (ADS) was not mandatory. The MPEP 601.05(b) states:

In applications filed before September 16, 2012, the application data sheet is not a requirement of 37 CFR 1.51(b) for a complete application, but is rather supplemental to the application and is used to capture bibliographic information.

However, not submitting an ADS could lead to the following consequences:

• Manual data entry: The USPTO would have to manually enter bibliographic information from other application papers, which could potentially lead to errors.
• Delayed processing: Without an ADS, the application processing might take longer as the information needs to be gathered from various sources.
• Potential for inconsistencies: Information scattered across different documents might lead to inconsistencies in the application record.
• Missed benefits: Certain benefits, such as easily claiming domestic benefit or foreign priority, might be harder to establish without an ADS.

While not submitting an ADS wouldn’t result in an incomplete application, it was generally recommended to include one for smoother processing and to ensure accurate capture of bibliographic information.

To learn more:

• Application Data Sheet
• ADS
• pre-AIA
• patent application
• bibliographic information

The United States Patent and Trademark Office (USPTO) does not require proof of authority to be filed by a legal representative of a deceased or incapacitated inventor. MPEP 409.01(b) states:

“Proof of authority of the legal representative of a deceased or incapacitated inventor is not required.”

However, it’s important to note that while the USPTO doesn’t require this proof, the legal representative should ensure they are properly acting in such a capacity. The MPEP advises:

“Although the Office does not require proof of authority to be filed, any person acting as a legal representative of a deceased or incapacitated inventor should ensure that he or she is properly acting in such a capacity.”

This means that while formal proof isn’t needed for USPTO purposes, the legal representative should be prepared to demonstrate their authority if challenged in other legal contexts.

To learn more:

• legal representative
• proof of authority
• deceased inventor
• incapacitated inventor
• pre-AIA

For applications filed on or after September 16, 2012, citizenship information is no longer required. The MPEP states:

“For applications filed on or after September 16, 2012, the citizenship of the inventor is no longer required by 35 U.S.C. 115 or 37 CFR 1.63.”

However, for applications filed before September 16, 2012, citizenship information was required under pre-AIA 35 U.S.C. 115.

To learn more:

• Citizenship
• Patent Application
• Inventor Information
• AIA
• Pre-AIA

Handling changes in inventorship in a continuing application depends on the filing date of the application and the nature of the change. Here are the key points:

1. For applications filed on or after September 16, 2012:
   • Inventorship is determined by the Application Data Sheet (ADS) if filed before or with the oath/declaration copy.
   • If no ADS is filed, inventorship is based on the oath/declaration copy from the earlier application.
   • New joint inventors must provide a new oath or declaration.
2. For applications filed before September 16, 2012:
   • To remove an inventor, file a copy of the prior oath/declaration with a statement requesting deletion of the non-inventor’s name.
   • Alternatively, file a new oath/declaration with the correct inventive entity.
   • For continuation-in-part applications, a new oath/declaration is typically required.

According to MPEP 602.05(b): If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(b), the continuation or divisional application may either be filed (A) with a copy of an oath or declaration from a prior application and a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the continuation or divisional application, or (B) with a newly executed oath or declaration naming the correct inventive entity.

Always ensure compliance with the specific requirements based on your application’s filing date and type.

To learn more:

• inventorship changes
• continuing application
• oath
• declaration
• AIA
• pre-AIA

The initial ownership of a patent depends on the filing date of the application. For applications filed on or after September 16, 2012, the MPEP states:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a).’

For applications filed before September 16, 2012:

‘For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This distinction is important for determining the initial owner of a patent or patent application.

The processing of a pre-AIA 37 CFR 1.47 application involves several steps:

1. A filing date is assigned if the application meets the requirements of 37 CFR 1.53(b).
2. A filing receipt is sent to the applicant.
3. The application or an electronic message about the petition is forwarded to the Office of Petitions.
4. If the papers are found acceptable, the Office of Petitions enters a decision in the file.
5. A notice is published in the Official Gazette with application details.
6. The USPTO notifies the nonsigning inventor(s) or legal representative(s) by letter.

As stated in the MPEP, When papers deposited pursuant to pre-AIA 37 CFR 1.47 are found acceptable, the Office of Petitions enters a decision to that effect in the file. A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s).

To learn more:

• pre-AIA
• 37 CFR 1.47
• patent application processing
• Office of Petitions
• Official Gazette

To learn more:

• 37 CFR 1.47

For applications filed before September 16, 2012 (pre-AIA applications), the USPTO has specific guidelines for handling inconsistencies between the Application Data Sheet (ADS) and other documents. According to MPEP 601.05(b):

If an ADS is inconsistent with the information provided in another document that was submitted at the same time or previous to the ADS submission, the ADS will control.

However, there are exceptions to this rule:

• Inventorship: The ADS does not control if it’s inconsistent with the inventorship set forth in an executed oath or declaration.
• Correspondence address: A clear direction to use a different address will override the ADS.
• Small entity status: Any small entity assertion or claim will control over the ADS.

It’s crucial for applicants to ensure consistency across all application documents to avoid potential issues during the examination process.

To learn more:

• ADS
• Inconsistencies
• Pre-AIA
• Patent Application

The guidance in MPEP 409.03(f) specifically addresses the issue of continuation-in-part (CIP) applications in relation to assignments. According to MPEP 409.03(f):

“An assignment of an application and any ‘reissue, division, or continuation of said application’ does not itself establish an assignment of a continuation-in-part application. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956).”

This means that even if an original application has been assigned, and that assignment includes language covering continuations and divisions, it does not automatically cover a continuation-in-part application. This is because a CIP application, by definition, contains new matter not present in the original application.

When dealing with a CIP application under pre-AIA 37 CFR 1.47(b), applicants need to ensure that the assignment or proof of proprietary interest specifically covers the new matter included in the CIP. A new assignment or demonstration of proprietary interest may be necessary for the portions of the CIP that were not present in the original application.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• continuation-in-part
• patent application
• assignment

To learn more:

• 37 CFR 1.47(b)

The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change:

‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’

This change allows assignees of the entire interest to take a more active role in patent prosecution by becoming the applicant. The AIA aimed to modernize the U.S. patent system and align it more closely with international practices.

For more detailed information on how the AIA affects assignee rights, refer to MPEP § 325 for applications filed on or after September 16, 2012.

When an inventor becomes legally incapacitated before filing a patent application and executing the required oath or declaration, a legal representative must be appointed to act on their behalf. According to 37 CFR 1.43 (pre-AIA):

“In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.”

The legal representative, typically appointed by a court of competent jurisdiction, can then execute the oath or declaration and proceed with the patent application process on behalf of the incapacitated inventor.

To learn more:

• legal incapacitation
• legal representative
• patent application
• pre-AIA

In pre-2012 patent applications, filing a new power of attorney can have significant effects on existing powers of attorney. MPEP 402.05(b) outlines several scenarios:

1. New power of attorney without explicit revocation: “When an original power of attorney is filed giving power of attorney to attorneys A, B, and C, and the same principal subsequently files another power of attorney, giving power of attorney to D without revoking all prior powers of attorney, the subsequently filed power of attorney will be treated as a revocation of the original power of attorney.”
2. Assignee filing new power of attorney: “If the applicant signed the original power of attorney, and an assignee of the entire interest of the applicant later takes action and files a new power of attorney, the original power of attorney is revoked and replaced by the power of attorney filed by the assignee.”
3. Change in Customer Number: “If a power of attorney is given to the practitioners associated with a Customer Number, and a (second) power of attorney is later received giving power of attorney to patent practitioners associated with a different Customer Number, the second power of attorney will be processed, with the first Customer Number being replaced with the second.”

In all these cases, the most recently filed power of attorney will control, effectively revoking or replacing the previous ones.

To learn more:

• power of attorney
• revocation
• pre-AIA
• customer number

For pre-AIA applications, the Application Data Sheet (ADS) plays a crucial role in establishing priority claims:

1. For domestic priority: MPEP 601.05(b) states, “Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120.” This means that including domestic priority information in the ADS satisfies the requirement for a specific reference to earlier filed applications.

2. For foreign priority: The MPEP notes, “Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55.”

In both cases, including priority information in the ADS eliminates the need to make these claims elsewhere in the application, such as in the specification.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Priority Claims
• Domestic Priority
• Foreign Priority

To file an application under pre-AIA 37 CFR 1.47(b), an applicant must demonstrate a proprietary interest in the subject matter of the application. The MPEP outlines three ways to establish this:

1. Show that the invention has been assigned to the applicant
2. Provide evidence that the inventor has agreed in writing to assign the invention to the applicant
3. Otherwise demonstrate a proprietary interest in the subject matter of the application

The MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application.”

For more detailed information on demonstrating proprietary interest, refer to MPEP § 409.03(f).

To learn more:

• pre-AIA
• patent application
• proprietary interest
• assignment

In pre-AIA patent applications (filed before September 16, 2012), a power of attorney given by the assignee of the entire interest has significant implications for previous powers of attorney. As stated in the MPEP:

A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in pre-AIA 37 CFR 3.71 and pre-AIA 37 CFR 3.73(b).

This means that when the assignee of the entire interest files a new power of attorney, it effectively cancels all previous powers of attorney given by the applicant or any prior assignees. However, the assignee must properly establish their right to take action in the application according to the relevant regulations.

To learn more:

• power of attorney
• patent application
• pre-AIA
• assignee
• revocation

The first inventor to file provisions that took effect on 3/16/2013 require additional statements for certain “transition” applications:

– Transition applications are those filed on or after 3/16/2013 that claim priority to an application filed before 3/16/2013.
– If a transition application ever contained a claim having an effective filing date on or after 3/16/2013, a statement to that effect is required within the later of 4 months from the actual filing date, 4 months from national stage entry, 16 months from the prior application, or the date the claim was first presented.
– This statement requirement does not apply if the application only claims priority to applications filed on or after 3/16/2013, or if the applicants reasonably believe the application never contained such a claim.

See MPEP 210 and MPEP 2159 for more details.

The first inventor to file provisions of the America Invents Act (AIA) have significant implications for priority and benefit claims, particularly for applications filed on or after March 16, 2013. Key points include:

1. The effective filing date of each claimed invention determines whether an application is subject to examination under AIA or pre-AIA 35 U.S.C. 102 and 103.
2. Applications that contain or contained at any time a claim with an effective filing date on or after March 16, 2013, are subject to the AIA version of 35 U.S.C. 102 and 103.
3. Applications that claim priority to or benefit of a pre-AIA application may be subject to additional requirements.

As stated in the MPEP: These provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time— (A) a claim to a claimed invention that has an effective filing date as defined under section 100(i) of title 35, United States Code, that is on or after March 16, 2013; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim. (MPEP 210)

For transition applications (those filed on or after March 16, 2013, that claim priority to or benefit of a pre-AIA application), applicants may need to provide a statement regarding the presence of claims with an effective filing date on or after March 16, 2013. This requirement is outlined in 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6).

For more information on effective filing date, visit: effective filing date.

For more information on first inventor to file, visit: first inventor to file.

For more information on pre-AIA, visit: pre-AIA.

For more information on transition applications, visit: transition applications.

To prove an invention has been assigned in a pre-AIA 37 CFR 1.47(b) application, you must submit the following:

• A copy of the assignment in English
• A statement under pre-AIA 37 CFR 3.73(b) by the assignee

According to MPEP 409.03(f):

“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant. A statement under pre-AIA 37 CFR 3.73(b) by the assignee must also be submitted (see MPEP § 324).”

It’s important to note that the assignment must specifically cover the invention described in the application. General assignments may not be sufficient.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• assignment
• patent application
• proof of ownership

To learn more:

• 37 CFR 1.47(b)

How did the ADS format differ for applications filed before September 16, 2012 compared to later applications?

The Application Data Sheet (ADS) format for applications filed before September 16, 2012 (pre-AIA) differed from the format used in later applications. According to MPEP 601.05(b):

For applications filed before September 16, 2012, the Office continued to use the ADS form PTO/SB/14 that was available prior to September 16, 2012.

Key differences in the pre-September 16, 2012 ADS format include:

• Form number: The pre-AIA ADS used form PTO/SB/14, while post-AIA applications use form PTO/AIA/14.
• Inventor information: The pre-AIA ADS didn’t require as detailed inventor information as the post-AIA version.
• Domestic benefit/Foreign priority: The format for claiming these was simpler in the pre-AIA ADS.
• Assignee information: The pre-AIA ADS had a different section for providing assignee information.
• Signature requirements: The pre-AIA ADS had different signature requirements compared to the post-AIA version.

It’s important to use the correct ADS form based on your application’s filing date to ensure compliance with USPTO requirements and proper processing of your application.

To learn more:

• Application Data Sheet
• ADS format
• pre-AIA
• post-AIA
• patent application

The process for changing the correspondence address in a patent application filed before September 16, 2012, depends on whether an oath or declaration has been filed:

• Before filing an oath or declaration: The correspondence address can be changed by the party who filed the application, including the inventor(s), any patent practitioner named in the transmittal papers, or the assignee who filed the application.
• After filing an oath or declaration: The correspondence address can be changed by a patent practitioner of record, an assignee as provided under pre-AIA 37 CFR 3.71(b), or all of the applicants, unless there’s an assignee of the entire interest who has taken action in the application.

As stated in MPEP 601.03(b): “Where a correspondence address has been established on filing of the application or changed pursuant to pre-AIA 37 CFR 1.33(a)(1) (prior to the filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors), that correspondence address remains in effect upon filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 and can only be subsequently changed pursuant to pre-AIA 37 CFR 1.33(a)(2).”

To learn more:

• correspondence address
• patent application
• pre-AIA
• oath
• declaration
• patent practitioner

How can an assignee establish the right to take action in a pre-AIA application?

For pre-AIA applications (filed before September 16, 2012), an assignee can establish the right to take action by:

1. Filing papers in the USPTO demonstrating the chain of title from the inventor to the assignee, or
2. Specifying in the papers requesting or taking action that action is being taken pursuant to a specific 37 CFR provision.

According to MPEP 324: “The assignee must establish its ownership of the property to the satisfaction of the Director. The chain of title from the inventor to the assignee must be clearly established.” This typically involves submitting assignment documents or other evidence of ownership to the USPTO.

For more information on assignee rights, visit: assignee rights.

For more information on pre-AIA, visit: pre-AIA.

For more information on USPTO procedures, visit: USPTO procedures.

For patent applications filed before September 16, 2012, an applicant can revoke a power of attorney using Form PTO/SB/81. According to MPEP 402.05(b), “Form PTO/SB/81 may be used to revoke a power of attorney in an application filed before September 16, 2012.” The revocation can be done at any stage of the proceedings by an applicant for patent or an assignee of the entire interest of the applicant.

It’s important to note that fewer than all of the applicants or assignees may revoke the power of attorney only upon showing sufficient cause and paying a petition fee. The patent practitioner will be notified of the revocation, and the notice will be mailed to the correspondence address for the application in effect before the revocation.

To learn more:

• power of attorney
• revocation
• pre-AIA
• patent application

If an applicant in a pre-AIA 37 CFR 1.47(b) application doesn’t have an assignment or agreement to assign, they can demonstrate sufficient proprietary interest by:

• Submitting a legal memorandum
• Providing an affidavit or declaration of firsthand knowledge
• Including copies of relevant statutes or court decisions (if non-U.S.)

MPEP 409.03(f) states:

“A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the pre-AIA 37 CFR 1.47(b) applicant.”

The legal memorandum should be prepared by an attorney familiar with the relevant jurisdiction’s laws. Supporting facts should be provided through affidavits or declarations from individuals with firsthand knowledge. For non-U.S. jurisdictions, copies of relevant statutes or court decisions (in English) should be included.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• proprietary interest
• patent application
• legal memorandum

To learn more:

• 37 CFR 1.47(b)

For pre-AIA applications, the resolution of inconsistencies between the Application Data Sheet (ADS) and other documents is governed by specific rules:

1. General rule: MPEP 601.05(b) states, “The latest submitted information will govern notwithstanding whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by an oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67, except as provided by pre-AIA 37 CFR 1.76(d)(3).”

2. Exception for inventor information: “The oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67 governs inconsistencies with the application data sheet in the naming of inventors and setting forth their citizenship.”

3. Correction process: If inconsistencies exist, a supplemental ADS should be submitted to conform the information with the correct data in other documents.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Inconsistencies
• Inventor Information