A lot has been written about the new Patent Office forms that must be filed with new patent applications after Sept. 16, 2012. You could spend a few hours reading about it on Karen Hazzah's site here, on Oblon's web site here, and on the PharmaPatents web site here. But if you only have a few minutes to figure out what you absolutely need to file with the your patent application after Sept. 16, 2012 in order to comply with the new American Invents Act (AIA) rules and look competent to your client, then read this blog posting.
If there is no Assignee at the time of filing, then file the following:
- Application Data Sheet (ADS) (PTO Form AIA/14)
- A Declaration for each inventor (PTO Form AIA/01)
- A Power of Attorney signed by each inventor (PTO Form AIA/82B)
- A Power of Attorney Transmittal (PTO Form AIA/82A)
If an Assignment is filed after the initial filing of the application, then file:
- Assignment for each inventor (a good Oblon Assignment)
- A Power of Attorney to Prosecute (PTO Form AIA/80)
- 3.73(c) Statement (PTO Form AIA/96)
If there is an Assignee at the time of filing, then file the following:
- Application Data Sheet (ADS) (PTO Form AIA/14)
- A Declaration for each inventor (PTO Form AIA/01)
- Assignment for each inventor (a good Oblon Assingment)
- A Power of Attorney signed by Assignee (PTO Form AIA/82B)
- A Power of Attorney Transmittal (PTO Form AIA/82A)
Note that the Fee Transmittal Form, Utility Transmittal Form and the Assignment Recordation Form are optional.
Mark Terry is a patent attorney, and former Patent Examiner, residing in the City of Miami, with a legal practice that focuses on obtaining business method and software patents for his clients.
