Presentation on theme: "10-13-08 CHAGAL - OATH AND POWER OF ATTORNEY 1 The inventor must provide an oath (swearing) or a declaration (acknowledging the penalties of perjury: see."— Presentation transcript:
10-13-08 CHAGAL - OATH AND POWER OF ATTORNEY 1 The inventor must provide an oath (swearing) or a declaration (acknowledging the penalties of perjury: see 35 USC § 25, which references 18 USC § 1001 )35 USC § 2518 USC § 1001 concerning the contents of his patent application. See PTO FORM SB-01.PTO FORM SB-01 In general: find forms at http://www.uspto.gov/web/forms/index.html#startformshttp://www.uspto.gov/web/forms/index.html#startforms The patent prosecutor must: Warn the inventors of the consequences of false statements. Go over the contents of the Declaration to make sure the inventors know what they are signing! Have the inventor sign the declaration. (NOTE: Inventors must sign, whether or not they have assigned* the invention to their employer or any other person or entity.) INVENTOR’S OATH Rule 63 (37 CFR § 1.63) Rule 63 (37 CFR § 1.63)
10-13-08 CHAGAL - OATH AND POWER OF ATTORNEY 2 OATH or DECLARATION: CONTENTS The declaration must: * Identify the inventor(s) (full name, country of citizenship, mailing address). Rule 63(a)(2) and (3) * Affirm that the declarant is the original and first inventor of the claimed subject matter. Rule 63(a)(4) * Affirm that the inventor has reviewed & understood the application’s contents, including the claims. Rule 63(b)(2) * Affirm that the inventor knows of the duty to disclose all known information material to patentability. Rule 63(b)(3) * Include information regarding prior (counterpart) foreign applications. Rule 63(c)(2)
10-13-08 CHAGAL - OATH AND POWER OF ATTORNEY 3 POWER OF ATTORNEY Rule 32 (37 CFR § 1.32) Rule 32 (37 CFR § 1.32) A Power of Attorney authorizes the Patent Agent/Patent Attorney to act for the inventor before the PTO. Only people listed on the Power of Attorney can sign submissions to the PTO (amendments, IDSs, etc.) on behalf of the inventor. See FORM SB- 80.FORM SB- 80. Patent prosecutor should: Have the inventor (even if the patent was assigned) sign a written document, authorizing that patent attorney, and up to 9 additional colleagues, to act on his behalf. File the Power of Attorney with the first filing with the PTO (usually the application) on behalf of the inventor.