[Patentpractice] Am I losing my mind?

[Randall Svihla]

Hi, Richard

Where do you get the idea that you do not need to file a copy of the declaration from the parent application in a continuation application?  I find it hard to believe you have never filed one and have now for the first time received a NTFMP requiring one.

The USPTO's Utility Patent Application Transmittal (form PTO/AIA/15) includes this section:

[cid:image003.png at 01DAAB81.D967CB80]

See 37 CFR 1.63(d), which states as follows:


(d)

(1) A newly executed oath or declaration under § 1.63<https://www.law.cornell.edu/cfr/text/37/1.63>, or substitute statement under § 1.64<https://www.law.cornell.edu/cfr/text/37/1.64>, is not required under §§ 1.51(b)(2)<https://www.law.cornell.edu/cfr/text/37/1.51#b_2> and 1.53(f), or under §§ 1.497<https://www.law.cornell.edu/cfr/text/37/1.497> and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35<https://www.law.cornell.edu/uscode/text/35> U.S.C. 120<https://www.law.cornell.edu/uscode/text/35/120>, 121<https://www.law.cornell.edu/uscode/text/35/121>, 365(c)<https://www.law.cornell.edu/uscode/text/35/365#c>, or 386(c)<https://www.law.cornell.edu/uscode/text/35/386#c> in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.

(2) The inventorship of a continuing application filed under 35 U.S.C. 111(a)<https://www.law.cornell.edu/uscode/text/35/111> is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.

(3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64<https://www.law.cornell.edu/cfr/text/37/1.64>.

Best regards,

Randall S. Svihla
NSIP Law
Washington, D.C.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Richard Straussman via Patentpractice
Sent: Tuesday, May 21, 2024 1:08 PM
To: patentpractice at oppedahl-lists.com
Cc: Richard Straussman <rstraussman at weitzmanip.com>
Subject: [Patentpractice] Am I losing my mind?

All,

    I filed a continuation (not a CIP or divisional) off of an allowed parent application.  We did not file a copy of the declaration from the parent application, as I have never done so before.  We have now received a Notice of Missing Parts because no declaration was filed with the application.  I know that we can file it per MPEP 602.05 (and maybe it is better practice to do so), but I am not aware of a requirement in that regard.  Am I wrong?  Or is the PTO entirely off base?

    Thanks in advance!
--
Richard Straussman
Senior Counsel
Registered Patent Attorney
Member NY, NJ & CT Bars
. . . . . . . . . . . . . .
Weitzman Law Offices, LLC
Intellectual Property Law
425 Eagle Rock Avenue, Suite 401 (PLEASE NOTE THE SUITE CHANGE)
Roseland, NJ 07068
direct line 973.403.9943
main 973.403.9940
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e-mail rstraussman at weitzmanip.com<mailto:rstraussman at weitzmanip.com>

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