Week of April 3, 2017

Delta Company filed a nonprovisional application sometime before September 16, 2012, and today, September 16, 2016, they now want to file a continuation application. What would be the best way to handle the oath or declaration?

(A) File a copy of the oath or declaration from the prior application.
(B) File a new oath or declaration since the requirements have changed.
(C) It is not necessary to file an oath or declaration in the new application.
(D) All of the above are correct.
(E) None of the above is correct.

 

 

ANSWER: (B).

See MPEP 201.06(c), subheading II, third paragraph after the rule:

“[A] copy of the inventor’s oath or declaration submitted in a continuing application filed on or after September 16, 2012, must comply with requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012.

“[A] new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012. See MPEP § 602.05(a) for additional details regarding oaths or declarations in continuing applications filed on or after September 16, 2012.”

 

Questions prepared by David E. Meeks, Esq. © 2017 Institute for Patent Studies, Inc. All rights reserved.