Changes to Continued Prosecution Application Practice

The Leahy-Smith America Invents Act (AIA) revised and streamlined the requirements for the inventor's oath or declaration. In implementing the AIA inventor's oath or declaration provisions, the United States Patent and Trademark Office (Office) provided that an applicant may postpone the filing of the inventor's oath or declaration until allowance if the applicant provides an application data sheet indicating the name, residence, and mailing address of each inventor. The rules pertaining to continued prosecution applications (which are applicable only to design applications) require that the prior nonprovisional application of a continued prosecution application be complete, which requires that the prior nonprovisional application contain the inventor's oath or declaration. This interim rule revises the rules pertaining to continued prosecution applications to permit the filing of a continued prosecution application even if the prior nonprovisional application does not contain the inventor's oath or declaration if the continued prosecution application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor.