I would like to thank Rick
Neifeld for bringing this matter to light.
As is laid out in Rick’s
email below, there is a potential issue with
design patent applications and the
new declaration rules. The problem
is that on its face the USPTO
rules for the new declarations apply to
applications filed in under 35 USC
111(a) or 363.
A design patent application is not filed under 35
111(a) (nor is a reissue
or a plant patent application).
The statute that requires the new
language clearly applies to all patent
applications. A copy of the
statute and the rule will be posted on the
website shortly for members
review. So clearly by statute you have
to use a declaration with
the “new” language, but according to a literal
reading of the USPTO’s rules,
you still need to have an old language
declaration in a design
We will be following up with the
USPTO to see if/when a clarification of
the rules will be published. It is, of course, anybody’s
guess what a
court would do about this issue. But the paranoid
practitioner may want
to create a declaration with both sets of language and/or
have the inventors
sign both types and file them both in the case.
Incoming vice chair of the
Industrial Design committee
On 8/30/2012 10:54 AM, RICK NEIFELD wrote:
The USPTO promulgated the final rule "Changes To Implement the Inventor's
Oath or Declaration Provisions of the Leahy-Smith America Invents Act".
77 FR 48776 (2012). That rules package contains an "Applicability Date"
provision that reads: "Applicability Date: The changes to ... [a bunch of, but
not all of, the new rules], apply only to patent applications filed under 35 U.S.C.
111(a) or 363 on or after September 16, 2012." However, there is an issue of
the applicability of certain of these new rules, of which everyone should be aware.
The "Applicability Date" provision means that "The changes to..." some of the new
rules are only conditionally applicable, and only apply "to patent applications filed
under 35 U.S.C. 111(a) or 363" for applications filed on or after September 16, 2012.
I find that the condition "patent applications filed under 35 U.S.C. 111(a)" to be
a significant problem in squaring which rules apply to which applications.
After research, my understanding of the phrase "filed under" in the context of
patent law and practice refers to a grant of authority. For example, design applications
are "filed under" chapter 16. See 35 USC 122. 35 USC 154(b) indicates that
applications "filed under 111(a)" exclude design and plant patent applications.
35 USC 351(c) indicates that "filed under" means a PCT application.
The CAFC has also referred to applications "filed under" to mean a reference
to the statutory section granting authority to a party to file the type of application
at issue. Cf. In re Beineke (plant application "filed under" 161); In re Weiler
(reissue application "filed under" 251)
There is a contrary line of reasoning and analysis, which suggests that "filed under
35 U.S.C. 111(a)" is more expansive, but it seems to be a weaker line of reasoning,
but for two factors. First, some of the rules, such as those directed to a change in
reissue application practice, would never go into effect if "filed under 111(a)" does
not include reissue applications. Second, my discussions with OPLA personnel in
charge of rule drafting indicate their belief that "filed under 111(a)" is, or was
intended to be, more expansive.
I have just conferred again with OPLA personnel, and I know that they are now cognizant
of this issue. Moreover, OPLA personnel indicated that they intend to review and
consider some official clarifying statement as to the "Applicability Date" provision.