Are new oaths or declarations required for continuation or divisional applications?
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 ยง 1.51(b)(2) and ยง 1.53(f) in a continuation or divisional application, provided that: The prior…
Read MoreHow are continuation or divisional applications handled under pre-AIA 37 CFR 1.47?
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…
Read MoreCan a corporation file a patent application under pre-AIA 37 CFR 1.47(b)?
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…
Read MoreWhat happens to a patent application when an inventor dies before filing?
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.)…
Read MoreWhat information must be included in the declaration when an application is executed by someone other than the inventor under pre-AIA 37 CFR 1.47(b)?
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…
Read MoreHow can an applicant demonstrate sufficient proprietary interest without an assignment or agreement to assign?
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…
Read MoreHow does an applicant demonstrate a proprietary interest under pre-AIA 37 CFR 1.47(b)?
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: Show that the invention has been assigned to the applicant Provide evidence that the inventor has agreed in writing to assign the invention to…
Read MoreWhat is the difference between an assignment and an agreement to assign in the context of MPEP 409.03(f)?
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)…
Read MoreWhat documentation is needed to show an agreement to assign in a pre-AIA 37 CFR 1.47(b) application?
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…
Read MoreWhat is the effect of restoration of the right of priority on pre-AIA applications?
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…
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