[Patentpractice] Am I losing my mind?

[Randall Svihla]

Yes, they will reject old declarations if they don't have the current language in them.  Always fun to get a new one when the original one was filed 15 years ago.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Timothy Snowden via Patentpractice
Sent: Tuesday, May 21, 2024 1:24 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Timothy Snowden <Timothy at thompsonpatentlaw.com>
Subject: Re: [Patentpractice] Am I losing my mind?

I can't answer that with citations because we always just copied declarations and re-filed them ... however, I can say we recently started having declarations rejected in Continuations where the original application used an old USPTO declaration form, because the old USPTO form didn't expressly say that the inventor authorized the application to be filed...

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Richard Straussman via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Tuesday, May 21, 2024 12:08 PM
To: patentpractice at oppedahl-lists.com <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
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