[Patentpractice] Best Practice for Declarations with "The Attached Application" Checked

Fri Apr 12 01:44:44 UTC 2024

So use different language.   At both Fish & Richardson and Morgan &
Finnegan, the form language for this situation was " application for
Letters Patent of the United States titled <Title> executed on even date
herewith" instead of "attached."   That cuts through all the Gordian knots
you're tying.

On Thu, Apr 11, 2024 at 8:43 PM Scott Nielson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> I would be uncomfortable with a combined assignment/declaration form that
> only identifies what is being assigned as "the attached application." I
> think you are right to attach a copy of the application in that situation.
>
> My personal opinion is that a combined assignment/declaration filed before
> the application should include at least the title of the application and
> perhaps the attorney docket number (and/or other potentially identifying
> information such as a client reference number) with blank spaces for the
> application number and filing date, which can then be filled when known.
>
> *Scott Nielson*
>
> 801-660-4400
> ------------------------------
> *From:* Roger Browdy <RLBrowdy at browdyneimark.com>
> *Sent:* Thursday, April 11, 2024 6:25 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Scott Nielson <scnielson at outlook.com>
> *Subject:* RE: [Patentpractice] Best Practice for Declarations with "The
> Attached Application" Checked
>
>
> Excellent advice, Scott.  Thank you for the MPEP cites which confirms that
> I need not attach anything to the declaration when it is filed on the date
> of application filing.
>
>
>
> However, how about the situation where the inventor has signed a combined
> declaration/assignment form and checked the “attached application” box.
> What do we do when filing the assignment for recordation?  Attach the
> application?  We have revised the form to give us authority to add the
> application number to the assignment document.  But some clients don’t use
> our form.  We do not use the form to serve as filing of the declaration on
> recordation.  When filing on the date of filing of the application, we file
> the form solely as a declaration with the application and we record solely
> as an assignment.  But must we attach the application to that assignment?
> We have been doing so.  The cover page will have the application number.
>
>
>
> Roger
>
>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Scott Nielson via Patentpractice
> *Sent:* Thursday, April 11, 2024 7:05 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Scott Nielson <scnielson at outlook.com>
> *Subject:* Re: [Patentpractice] Best Practice for Declarations with "The
> Attached Application" Checked
>
>
>
> Here is what the MPEP says:
>
>
>
> MPEP 602.08(b)
>
> It is improper for an applicant to sign an oath or declaration which is
> not attached to or does not identify the application (e.g., a specification
> and drawings) to which it is directed.
> *Attached does not necessarily mean that all the papers must be literally
> fastened. It is sufficient that the specification, including the claims,
> and the oath or declaration are physically located together at the time of
> execution.* Physical connection is not required. Copies of declarations
> are encouraged. See MPEP § 502.01, § 502.02, § 602, and § 602.05(a).
>
> MPEP 602.08(c)
>
> The following combination of information supplied in an oath or
> declaration *filed on the application filing date* with a specification
> are acceptable as minimums for identifying the application and compliance
> with any one of the items below will be accepted as complying with the
> identification requirement of 37 CFR 1.63:
>
>     (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*;
>
> ...
>
> Filing dates are granted on applications filed without an inventor’s oath
> or declaration in compliance with 37 CFR 1.63. The following combinations
> of information supplied in an oath or declaration *filed after the filing
> date of the application* are acceptable as minimums for identifying the
> application and compliance with any one of the items below will be accepted
> as complying with the identification requirement of 37 CFR 1.63:
>
> ...
>
>     (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
>
> ...
>
> *Any specification that is filed attached to an oath or declaration on a
> date later than the application filing date will not be compared with the
> specification submitted on filing. Absent any statement(s) to the contrary,
> the "attached" specification will be presumed to be a copy of the
> specification and any amendments thereto, which were filed in the USPTO in
> order to obtain a filing date for the application.*
>
> It seems that if the declaration checks the box for "attached application"
> and is *filed on the same day* as the application, then there is no need
> to attach a copy of the application to the declaration because it is
> presumed to be the same as the filed application.
>
>
>
> However, if the declaration checks the box for "attached application" and
> is *filed after *the application is filed, then a copy of the application
> should be attached to the declaration.
>
>
>
> In the latter case, it would be tempting to include a copy of the as-filed
> application without confirming with the inventor what version of the
> application is being referenced (e.g., the first draft, the draft after a
> co-inventor provided comments, etc.), particularly when the client
> contact is not the inventor and is a few layers removed from the inventor.
> I wonder if we need an email from the inventor confirming the version of
> the application the inventor had in mind when the declaration was signed.
> That seems a bit much.
>
>
>
> One best practice I take from all this is to always include a copy of the
> application in any emails including a request to sign a declaration.
>
>
>
> *Scott Nielson*
>
> 801-660-4400
> ------------------------------
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
> behalf of Roger Browdy via Patentpractice <
> patentpractice at oppedahl-lists.com>
> *Sent:* Thursday, April 11, 2024 12:38 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Roger Browdy <RLBrowdy at browdyneimark.com>
> *Subject:* Re: [Patentpractice] Best Practice for Declarations with "The
> Attached Application" Checked
>
>
>
> What is the best practice for filing a declaration received for filing
> with a new case that has the box “This declaration is directed to |X| The
> attached application” checked.  It seems to me that the declaration is not
> complete without an application attached thereto.  So I file the
> declaration with attached copy of the application as one document
> designated as “Oath or Declaration” (even if it is 122 pages long).
>
>
>
> The problem with doing this is that the helpful people at the PTO always
> seem to unbundle it and call the first page a declaration and the rest as
> another copy of the specification and claims.
>
>
>
> Does anyone think it is permissible to file such a declaration as a 1 page
> document only without attaching the “attached application” referred to in
> the document?
>
>
>
> Roger
>
>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Bob Barber via Patentpractice
> *Sent:* Thursday, April 11, 2024 10:10 AM
> *To:* For Patent Practitioners. This Is Not for Laypersons To Seek Legal
> Advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Bob Barber <bobbarber1970 at yahoo.com>
> *Subject:* Re: [Patentpractice] automatically granted petitions available
> in patent center?
>
>
>
> Thanks, I'm so used to going to the mis-named "existing submissions"
> drop-down menu that I didn't even notice the "petitions" drop-down menu
> next to it.  And then I found they're available below, on the PC page
> itself:
>
> [image: Inline image]
>
>
>
> On Thursday, April 11, 2024 at 03:56:31 PM GMT+3, Melanie Murdock <
> mmurdock at texaspatents.com> wrote:
>
>
>
>
>
> Hi Bob,
>
>
>
> If you’re asking about the ePetitions, they are available in Patent Center
> for preparation/submission by a registered practitioner only.  Sponsored
> support staff are not allowed to do these, although our attorney usually
> logs in and does a screenshare with the paralegal to make sure nothing gets
> overlooked.  Below is a screenshot I made for our attorneys awhile back.
>
>
>
> [image: A screenshot of a computer Description automatically generated]
>
>
>
> I hope this helps.
>
> Melanie
>
>
>
>
>
> Melanie Murdock
>
> Sr. Paralegal/Administrator
>
>
>
> [image: A close-up of a logo Description automatically generated with
> medium confidence]
>
>
>
> The information contained in this communication is confidential, may be
> attorney-client privileged and/or patent agent-client privileged, may
> constitute inside information, and is intended only for the use of the
> addressee.   Unauthorized use, disclosure or copying of this communication
> or any part thereof is strictly prohibited and may be unlawful.
>
>
>
>
>
>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Bob Barber via Patentpractice
> *Sent:* Thursday, April 11, 2024 7:47 AM
> *To:* For Patent Practitioners. This Is Not for Laypersons To Seek Legal
> Advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Bob Barber <bobbarber1970 at yahoo.com>
> *Subject:* [Patentpractice] automatically granted petitions available in
> patent center?
>
>
>
> I apologize in advance if I missed a discussion on this, but were any of
> the automatically granted petitions that used to be available in EFS
> carried forward into EFS, and if so, how does one file them? I haven't
> found them in PC - it appears that all petitions are now decided by people.
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>

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