January 23, 2008

The USPTO announced yesterday that as of June 1, 2008, it will no longer accept an oath or declaration as complying with 37 C.F.R. § 1.63(b)(3) unless it includes an acknowledgment that the declarant has a duty to disclose information material to patentability under 37 C.F.R. § 1.56. This particular announcement (“Duty of Disclosure Language Set Forth in Oaths or Declarations Filed in Nonprovisional Patent Applications,” link below) was signed yesterday by Jon Dudas, the Under Secretary of Commerce for Intellectual Property and the Director of the U.S. Patent and Trademark Office, and provides some background as to the general procedure under 37 C.F.R. § 1.63, and how that procedure will change as of June 1. Specifically, by issuing this notice, “the Office is putting applicants and their representatives on notice that compliance with the express language of 37 CFR 1.63 will now be required,” and that “to the extent the Reply to Comment 38 in the 1992 Final Rule authorized the continued use of the “material to examination” and “in accordance with 37 CFR 1.56(a),” language, this authorization [] is hereby rescinded, and reliance on the Reply to Comment[] 38 will no longer be accepted.” The full USPTO, as well as the CFR sections referenced herein, are provided below.

USPTO Announcement: LINK
37 C.F.R. § 1.56: LINK
37 C.F.R. § 1.63: LINK


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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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