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

Fri Apr 12 18:33:11 UTC 2024

One patent attorney I knew reported that he has video recorded inventors signing declarations and assignments. This involved getting everyone together in the same room with pen and paper. The inventors would identify themselves for the camera and acknowledge their signatures on the documents as well as their understanding of the patent application. The thinking was that the video would make it very difficult for an inventor to later take a position in court (e.g., after he went to work for competitor) that there is something improper about the assignment or declaration documents.

-Ben

Benjamin A. Keim
(206) 920-9038
ben at newportip.com<mailto:ben at newportip.com>

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Patent Lawyer via Patentpractice
Sent: Friday, April 12, 2024 9:26 AM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Cc: Patent Lawyer <patentlawyer995 at gmail.com>
Subject: Re: [Patentpractice] Best Practice for Declarations with "The Attached Application" Checked

How do you confirm that the inventor had a copy of the application for which they signed a declaration or which they assigned?

I want a record that the inventor saw or had access to the application they are making a declaration about or are assigning.

When obtaining a declaration or an assignment, I provide the inventor with an electronic copy of the application and a request to sign the document(s).  I prefer to do this pre-filing so that the original filing has a declaration and an assignment.   Obviously, I cannot confirm that they read what they were given, but there is a record of them having the application when they signed the document.

It is harder to do with national phase applications coming to me from PCT applications filed outside the US. Or any foreign origin application, for that matter.   There I have to rely on the foreign associate to obtain the signatures.  I tell them to provide the inventor with a copy of the application, but I don’t know if they do.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Reply-To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Thursday, April 11, 2024 at 9:47 PM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>>
Subject: Re: [Patentpractice] Best Practice for Declarations with "The Attached Application" Checked

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<mailto: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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Scott Nielson <scnielson at outlook.com<mailto: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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Scott Nielson <scnielson at outlook.com<mailto: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<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Roger Browdy via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Roger Browdy <RLBrowdy at browdyneimark.com<mailto: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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Bob Barber <bobbarber1970 at yahoo.com<mailto: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:

[Inline image]

On Thursday, April 11, 2024 at 03:56:31 PM GMT+3, Melanie Murdock <mmurdock at texaspatents.com<mailto: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.

[A screenshot of a computer  Description automatically generated]

I hope this helps.

Melanie

Melanie Murdock

Sr. Paralegal/Administrator

[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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Bob Barber <bobbarber1970 at yahoo.com<mailto: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.
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