USPTO to start enforcing requirement that inventor oaths include reference to duty of disclosure

January 23, 2008
Post by Blog Staff

In a notice dated yesterday, the USPTO announced that it will begin enforcing compliance with 37 C.F.R. § 1.63(b)(3), which requires that inventor oaths include an acknowledgement of the duty to disclose information material to patentability under 37 C.F.R. § 1.56. Oaths filed on or after June 1, 2008 will have to have the language from the rule, or the USPTO will reject the oath as defective.

The USPTO changed § 1.63 back in 1992, but has not enforced compliance with the changes, which were designed to track changes made to § 1.56. In response to comments after the modification was promulgated, the USPTO arguably permitted the use of the older "material to the examination of the application in accordance with 1.56(a)" language sometimes used by practitioners. The notice yesterday formally rescinded such permission, and compliance with the rule as written will be required June 1. Note that for continuing applications (but not CIP applications) filed after June 1 that claim the benefit to an application filed before June 1, the "old" version of the oath will still be permitted, although it is good practice to just use the language required by the rule. The USPTO also provides a form for this purpose (Form PTO/SB/01 or PTO/SB/01A), containing this language:

I acknowledge the duty to disclose information which is material to patentability as defined in 37 CFR 1.56, including for continuation-in-part applications, material information which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.

One would hope that this statement meets the requirements of § 1.63(b)(3).

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