[Patentpractice] Am I losing my mind?

[Richard Straussman]

Randall,

     Thank you - I never noticed that second part in the CFR.  I guess I 
am wrong.

*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
*fax*973.403.9944
*e-mail*rstraussman at weitzmanip.com

*http://www.weitzmanip.com
*



On 5/21/2024 1:21 PM, Randall Svihla wrote:
>
> 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:
>
> 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
> **fax**973.403.9944
> **e-mail**_rstraussman at weitzmanip.com_
>
> **_http://www.weitzmanip.com_***_
> _*
>
>
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