United States:
Oaths/Declarations To Comply With Express Language Of Rule 63
27 March 2008
McDermott Will & Emery
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The U.S. Patent and Trademark Office (USPTO) recently
indicated that, in order to comply with 37 CFR 1.63(b)(3), an
oath or declaration must acknowledge a duty to disclose
information material to patentability as defined in 37 CFR
1.56. Accordingly, all oaths or declarations filed on or after
June 1, 2008, will be required to include the language
expressly set forth in 37 CFR 1.63, including that in 37 CFR
1.63(b)(3). The notice applies to oaths or declarations filed
in all non-provisional patent applications, including reissue
applications.
All oaths or declarations filed on or after June 1,2008, will
be required to include the language expressly set forth in 37
CFR 1.63, including that in 37 CFR 1.63(b)(3). This notice
applies to oaths or declarations filed in all nonprovisional
patent applications, including reissue applications.
According to the USPTO, some applicants continue to use
"material to the examination of the application"
rather than the express statutory "material to
patentability," and "in accordance with 1.56(a)"
rather than the express statutory "as defined in
1.56." If an oath or declaration filed on or after June 1,
2008, does not include the express language set forth in 37 CFR
1.63(b)(3), the USPTO will object to the oath or declaration as
failing to comply with 37 CFR 1.63. A supplemental oath or
declaration pursuant to 37 CFR 1.67 will then be required.
The content of this article is intended to provide a
general guide to the subject matter. Specialist advice should
be sought about your specific circumstances.
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