Attachment 26 - DCB 2019-01 (28).docx

D a t a C a p t u r e B u l l e t i n

Number 2019-30 December 13, 2019

CLARIFICATION OF REQUIREMENT THAT OATH OR DECLARATION MUST IDENTIFY THE APPLICATION TO WHICH IT BELONGS

The information in this bulletin will be included in the 2020 revision of

DATA ENTRY MANUAL FOR UTILITY PATENTS.

***This bulletin is effective immediately.***

See DATA ENTRY MANUAL FOR UTILITY PATENTS, 7B. Inventor Data, Pre-Capture Verification, PaDaCap contractor’s compliance review of OATH in application filed on or after September 16, 2012.

Under required statements for oath or declaration in an application filed on or after September 16, 2012, item (5) is revised as shown below.

(5) identification of the application to which the declaration is directed See NOTE (iii) below.

See DATA ENTRY MANUAL FOR UTILITY PATENTS, 7B. Inventor Data, Pre-Capture Verification, PaDaCap contractor’s compliance review of OATH in application filed on or after September 16, 2012.

Under required statements for oath or declaration in an application filed on or after September 16, 2012, NOTE (iii) is added.

NOTE (iii): It is not always necessary that the oath/declaration show the application number. Some oaths and declarations are submitted at a time when the application number has not yet been assigned, but even after the application number has been assigned, certain other identifiers are acceptable. MPEP 602.08(c) describes acceptable minimums for the oath/declaration’s identification of the application to which it belongs.

For an oath/declaration submitted, along with a specification, on the application’s filing date, any one of the following is acceptable as compliance with the identification requirement. As stated in MPEP 602.08(c):

(A) name of inventor(s), and reference to an attached specification or application which is both attached to the oath or declaration at the time of execution and submitted with the oath or declaration on filing;

(B) name of inventor(s), and attorney docket number which was on the specification as filed; or

(C) name of inventor(s), and title of the invention which was on the specification as filed.

For an oath/declaration submitted after the application’s filing date, any one of the following is acceptable as compliance with the identification requirement. As stated in MPEP 602.08(c):

(A) application number (consisting of the series code and the serial number, e.g., 08/123,456);

(B) serial number and filing date;

(C) international application number of an international application;

(D) international registration number of an international design application;

(E) attorney docket number which was on the specification as filed;

(F) title of the invention which was on the specification as filed and reference to an attached specification or application which is both attached to the oath or declaration at the time of execution and submitted with the oath or declaration; or

(G) title of the invention which was on the specification as filed and accompanied by a cover letter accurately identifying the application for which it was intended by either the application number (consisting of the series code and the serial number, e.g., 08/123,456), or serial number and filing date. Absent any statement(s) to the contrary, it will be presumed that the application filed in the USPTO is the application which the inventor(s) executed by signing the oath or declaration.

See MPEP 602.05. In a continuation or divisional application, or in a continuation-in-part application filed on/after September 16, 2012, a “copy of an oath or declaration from a prior application may be submitted … even if the oath or declaration identifies the application number of the prior application.” However, once a filing date has been assigned to the continuation or divisional application, a copy of an oath/declaration from the prior application should be accompanied by a “cover letter … indicat[ing] that the oath or declaration submitted is a copy of the oath or declaration from a prior application. … Furthermore, applicant should also label the copy of the oath or declaration with the application number of the continuation or divisional application.”

DCB No. 2019-30 Office of Data Management Page 3 of 3