New Patent Rules in Effect September 16, 2012, Permit Owners of Inventions to be Patent Applicants
On September 16, 2012, new rules will go into effect that implement the inventor’s oath or declaration provisions of the Leahy-Smith America Invents Act of 2011. Among other things, these rules permit the owner of an application filed on or after September 16, 2012, to be the “applicant.” These rules also require new language in all inventor declarations for applications filed on or after September 16, 2012, so declaration forms designed to comply with the old rules will not be accepted. These rules apply to newly filed provisional applications, non-provisional applications, international (PCT) applications, continuations, continuations-in-part (CIPs), and divisional applications, even if they claim priority to earlier-filed applications.
Under U.S. law prior to September 16, 2012, an inventor was always the applicant, though an owner effectively could prosecute the patent application. Under the new law, inventors and applicants are separate entities. An inventor may still be the applicant, but alternatively, an owner (such as an assignee, an employer to whom an employment agreement obliges assignment of patent rights, or others who can show a proprietary interest in the invention) may be the applicant. Regardless of who the applicant is, each inventor is still required to sign an oath or declaration in compliance with the new rules. When inventors refuse to sign or cannot be located, the new rules have substantially relaxed the requirements for an applicant to proceed without them.
Under the new rules, the originally named “applicant” will be presumed by the United States Patent and Trademark Office (USPTO) to be the owner of a patent application and any patent that issues from it, unless there is an assignment that indicates otherwise. Therefore, the owner of an invention may want to be listed as the original “applicant” for the corresponding patent application. When the inventor is not the applicant, the USPTO will require proof of ownership before issuing the patent to that applicant. Further, proof of ownership or an obligation to assign at the time the application is filed may be required to take advantage of other provisions that limit the effect of some types of commonly-owned prior art.
In view of these changes, designation of the “applicant” and ownership issues should be carefully considered at the time a patent application is filed.
This memorandum is not intended to provide legal advice, and no legal or business decision should be based on its content. Questions concerning issues addressed in this memorandum should be directed to your COJK attorney.
