By Christopher P. Singer --
In a Notice signed January 22, 2008, the U.S. Patent and Trademark Office announced that the language of oaths and declarations filed on or after June 1, 2008 will have to comply with the express language of 37 C.F.R. § 1.63. That is, oaths and declarations will need to recite the language found in § 1.63(b)(3), which requires a person making the oath or declaration to acknowledge his or her duty to disclose all information known to that person to be "material to patentability as defined in § 1.56." This language was entered in a 1992 amendment to that rule which read, "material to the examination of the application in accordance with § 1.56(a)." In its Notice, the PTO indicated that applicants are still filing oaths and declarations containing the outdated language. Failure to include the express language of § 1.63(b)(3) in an oath or declaration filed on or after June 1, 2008 will result in an objection from the Office that the document fails to comply with the requirements of the rule, and a supplemental oath or declaration filed under 37 C.F.R. § 1.67 will be required to remedy the problem.
The Office is waiving this requirement in a number of situations including: where an oath or declaration is filed prior to June 1, 2008 (with the understanding that use of the old language is effectively an acknowledgement of the duty to disclose information "material to patentability"); in continuation or divisional applications (not continuation-in-part applications) filed after June 1, 2008 and having a benefit claim under 35 U.S.C. § 120, where the oath or declaration is a copy of the previously accepted oath or declaration; and for issued patents in which the oath or declaration was filed prior to June 1, 2008.
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