[Patentpractice] Am I losing my mind?

[Gerry J. Elman]

Waitaminit.  Wasn't there a change several years ago permitting the Inventor’s Declaration to be filed as late as the issue fee payment?

What am I missing as to your scenario?

-Gerry          gerry at elman.com
Gerry J. Elman, Elman IP
6117 St James Pl, Denton, TX 76210
office ph. 610-892-9942    mobile 610-909-2468



-------- Original message --------
From: Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com>
Date: 5/21/24 3:17 PM (GMT-06:00)
To: "For patent practitioners. This is not for laypersons to seek legal advice." <patentpractice at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [Patentpractice] Am I losing my mind?


I wonder if you are getting the inventor declaration mixed up with the certified copy of the priority application.

When you file a CIP or divisional or continuation, you get a free pass on having to provide a certified copy of the priority application, if it was already provided in the parent case.  The Examiner is required to go on a treasure hunt to see whether the certified copy can be found in the parent case.

There is no such free pass for inventor declarations.  Why it is different for one thing and the other, I don't know.

On 5/21/2024 1:08 PM, Richard Straussman via Patentpractice wrote:
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
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Registered Patent Attorney
Member NY, NJ & CT Bars
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