Conditional Applicability of New USPTO Rules So Far as Designs Are Concerned -- by Margaret Polson, incoming vice chair of the Industrial Design committee -- see Committee Documents page

Announcement Description

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 case.  

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.

Margaret Polson

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. 




Created at 10/1/2012 11:54 PM by Garfield Goodrum
Last modified at 10/2/2012 12:06 AM by Garfield Goodrum