New: Managing the Changes to the Oath or Declaration Requirement: The Effect of the Leahy-Smith America Invents Act Oath or Declaration Change on Corporations

Author: Adam Thompson

A. P. Keith Patent Oath
1870 Patent with signatures, from SDASM archives

Abstract: On March 16, 2013, the requirements for an inventor’s oath or declaration filed with a patent application changed. Although these changes do not affect any non-continuing applications filed after March 16, 2013, when filing continuing applications for applications filed prior to March 16, 2013, these changes to the oath or declaration require assignees to contact past inventors and ask them to execute a new oath or declaration that meets the new requirements.

This article examines the impact of this change to the oath or declaration requirements for patent applications assigned to corporations and proceeds in five parts.

First, it examines the oath or declaration changes of the AIA and determines their effect on large corporations that actively prosecute their patents. Part II reviews the history and goals of the AIA. Part III provides an overview of the Pre-AIA and the Post-AIA patent law related to oath or declarations. Part IV evaluates the implications of the AIA oath or declaration changes on corporations. Lastly, Part V proposes a set of best practices for corporations to manage the effects of the AIA in the form of a multilayer solution.


The full article is available here.