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January 23, 2008

Swear It

The patent office will be refusing defective oaths for patent applications as of June. Shape up and swear like you mean it when you file.

Without empathic regard, the announcement, posted yesterday, failed to cite the specific language required, instead just referencing 37 CFR 1.63(b)(3), which reads:

(3) State that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in ยง 1.56.

The following language, used by this applicant for years, suffices:

I acknowledge the duty to disclose to the Office all information known which is material to patentability as defined in 37 CFR 1.56, including for continuation-in-part applications, material information which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.

If you like the USPTO form, it's sb0001. Many practitioners transcribe PTO forms into Word; geezerfied patent firms hang onto Word Perfect.

The announcement was posted as a skanky scanned version of a printed document, that had not been OCR'ed, signed by Jon Dudas, who apparently doesn't know anything about using computers, particularly Adobe Acrobat. But, then again, we wouldn't expect the Director of the USPTO to be a technologist.

Posted by Patent Hawk at January 23, 2008 12:23 PM | Prosecution


This is ineffective to place anyone on notice (as it claims to), as it isn't posted in the Federal Register. One would think an administrative agency would be aware of the APA...

Posted by: Everett Robinson at January 23, 2008 3:00 PM

This change to "material to patentability" may actually reduce what I deem necessary to send. I often send background art for the examiner's convenience, which isn't really material to patentability.

Posted by: bierbelly at January 25, 2008 8:22 AM