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Changes to Implement the Inventor's Oath or Declaration Provisions of the America Invents Act

Dear Colleagues,  

On August 14, 2012, the United States Patent Office issued final rules which implement the inventor’s oath or declaration provisions of the Leahy-Smith America Invents Act (AIA).  The new inventor’s oath/declaration provisions take effect on September 16, 2012, and apply to all non-PCT U.S. patent applications filed under 35 U.S.C. § 111(a) – including continuing and PCT bypass applications – on or after September 16, 2012, without regard to any priority claim, and regardless of when the oath or declaration is executed. For PCT national stage applications the new inventor’s oath/declaration provisions only apply to applications that have an international filing date on or after September 16, 2012. Therefore, even after September 16, 2012, the current inventor’s oath/declaration forms should be used for any national stage application with an international filing date before September 16, 2012.

Updated versions of combined inventor’s oath/declaration and assignment forms for single and multiple assignees necessary to comply with the new provisions are available on our website at http://www.oblon.com/patent-forms, under the “Download” tab. In addition, please see our list of Frequently Asked Questions to assist you with this transition.

As a final note, you may wish to file any continuation or divisional applications currently being considered prior to September 16, 2012, in order to avoid the necessity of having a new oath/declaration signed by all inventors.

We will continue to work closely with the Patent Office and update you as necessary as we gain more experience with the new rules. If you have any questions please do not hesitate to contact us.

With best regards,

Bradley D. Lytle