By Scott A. McKeown
| January 10, 2012
Troublesome Oath Requirements Revised
As anyone that has ever filed a patent reissue can attest, the inconsistent application of oath requirements can be maddening. In fact, the vast majority of patent reissue applications are delayed due to such informalities ---aggravating an already significant problem.
As the America Invents Act has required that the "deceptive intent" component of patent reissue oaths be stricken, the USPTO has taken the opportunity to fix a few other problems while they were under the hood. Last Friday, a Notice of Proposed Rule making entitled "Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act." (here)
Major Changes, include:
(1) Delete the requirement for a reissue oath or declaration to include a statement that all errors arose without any deceptive intent on the part of the applicant;
(2) Eliminate the requirement for a supplemental oath or declaration when a claim is amended, and require a corrected oath or declaration only where all errors previously identified in the reissue oath or declaration are no longer being relied upon as the basis for reissue;
(3) Require applicants to specifically identify any broadening of a patent claim, rather than merely provide an alternative statement that applicant is correcting an error of either claiming more or less than a patentee was entitled to claim;
(4) Clarify that a single claim containing both a broadening and a narrowing of the claimed invention is to be treated as a broadening. These changes will provide for more efficient processing of reissue applications and improve the quality of patents, in accordance with the intent of the Leahy-Smith America Invents Act.
(5) In order to implement the conforming amendment made to 35 U.S.C. 251 in Section 4(b)(2) of the Leahy-Smith America Invents Act, the Office is also proposing to amend the rules to permit an assignee of the entire interest who filed an application under 35 U.S.C. 118 that was patented to sign the reissue oath or declaration in a reissue application of such patent (even if the reissue application is a broadening reissue).
(6) Liberalize the use of duplicate oaths in continuation reissue applications.
Additional rules packages detailing procedures for implementing IPR and PGR are expected next week.