Friday, September 7, 2012

New rules for inventor declaration and power of attorney

Heads up: Big changes to patent practice starting September 16, 2012. Several new rules packages to implement various provisions of the America Invents Act (AIA) take effect on that date. The only rules package I'll talk about here relates to inventor declaration and power of attorney. The Federal Register Notice can be found here. PharmaPatents has a nice overview of these rules here. IP boutique Oblon Spivak has a FAQ here.

The new rules affect both the procedures for filing declarations and the substance of the declaration itself. Carl Oppedahl, an experienced practitioner who has studied the new rules extensively, says "it is not much of an exaggeration to say that they change everything about the Oath and Declaration of the inventor."

Carl's guest post on Patently-O explains the importance of using the "old" declaration for "old" applications and the "new" declaration for "new applications". Sounds like transitional practice in the days leading up to September 16 changeover will be tricky -- you don't want to send out the old declaration for signature before September 16 and then end up filing it after September 16. To get all the gory details without reading the 52 page notice in the Federal Register, you can purchase Carl's webinar "What will change about the oath or declaration on September 16?"

One far-reaching change in the AIA is that inventors are no longer required to be “applicants” on patent applications. To implement this change, the same rules package taking effect on September 16 allows assignees to not merely prosecute applications, but to actually file in the name of the applicant.

Assignees will probably be glad to hear that the onerous procedures for handling missing or non-signing inventors have been replaced by a much simpler procedure. Under the new rules, you file a much simpler "substitute statement."


  1. I don't know what it costs, but Carl's webinar is well worth the time. The presentation is very thorough, and is just repetitive enough that the new rules will stick with you once it's over.

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