Justification for Nonsubstantive Change

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE
United States Patent and Trademark Office
Recording Assignments
OMB CONTROL NUMBER 0651-0027
(August 2012)

Background
The United States Patent and Trademark Office (USPTO) is submitting this request to
update information collection 0651-0027, “Recording Assignments.” The USPTO is
making revisions to two existing approved forms in this collection related to the
inventor’s oath or declaration: Patent Recordation Form Cover Sheet (PTO-1595) and
Electronic Patent Assignment System (EPAS).
Section 4 of the Leahy-Smith America Invents Act (AIA) amends 35 U.S.C. § 115 to
streamline the requirements for the inventor’s oath or declaration. For example,
amended 35 U.S.C. § 115(e) provides for making the statements required under
35 U.S.C. § 115(b) and (c) in an assignment of record and specifically permits an
individual who is under an obligation of assignment of an application to include the
required statements in the assignment executed by the individual, in lieu of filing the
statements separately. The changes to 35 U.S.C. § 115 in the AIA are effective on
September 16, 2012, but apply only to patent applications filed on or after September
16, 2012.
37 CFR 1.63(e) implements the provisions of 35 U.S.C. § 115(e). Section 1.63(e)(1)
provides that an assignment may also serve as an oath or declaration required by
§ 1.63 if the assignment: (1) includes the information and statements required under
§ 1.63(a) and (b); and (2) a copy of the assignment is recorded as provided for in
37 CFR part 3. The assignment, including the information and statements required
under § 1.63(a) and (b), must be executed by the individual who is under the obligation
of assignment. Section 1.63(e)(2) provides that any reference to an oath or declaration
under § 1.63 includes an assignment as provided for in § 1.63(e).
37 CFR 3.31 now requires a conspicuous indication, such as by use of a check-box on
the assignment cover sheet, to alert the USPTO that an assignment submitted with an
application is submitted for a dual purpose: recording in the assignment database, such
as to support a power of attorney, and for use in the application as the oath or
declaration. Assignments cannot be recorded unless an application number is provided
against which the assignment is to be recorded. When an assignment is submitted for
recording along with a paper application, the assignment is separated from the paper
application and forwarded to the Assignment Recordation Branch for recording in its
database at the time where the application is assigned an application number. The
assignment does not become part of the application file. If the applicant indicates that
an assignment-statement is also an oath or declaration, the USPTO will scan the
assignment into the Image File Wrapper (IFW) file for the application before forwarding

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE TO 0651-0027
(continued)

it to the Assignment Recordation Branch. Failure to utilize the check-box will result in a
Notice to File Missing Parts of Nonprovisional Application requiring an inventor’s oath or
declaration as the assignment will not be made part of the application file nor will the
USPTO recognize that the § 1.63 oath or declaration requirement has been satisfied. A
copy of the assignment would need to be submitted in reply to the Notice along with the
surcharge for the late submission of the inventor’s oath or declaration.
For EFS-Web filing of application papers, EFS-Web does not accept assignments for
recording purposes when filing an application. See Legal Framework for Electronic
Filing System – Web (EFS-Web), 74 Fed. Reg. 55200, 55202 (Oct. 27, 2009).
Recording of assignments may only be done electronically in EPAS (Electronic Patent
Assignment System), notwithstanding the existence of a link from EFS-Web to EPAS
that can be utilized to file an assignment after the application is filed. Accordingly, for
EFS-Web submissions, all assignments submitted on filing of the application or later
submitted will be made of record in the application (entered into the IFW), and will not
be forwarded to the Assignment Recordation Branch for recordation by the Office.
Thus, an assignment must be submitted to the Assignment Recordation Branch in order
to comply with § 1.63(e)(1)(ii). If an applicant files the assignment-statement for
recording via EPAS and utilizes the check-box, the Office will place a copy of the
assignment-statement in the related application file.
Summary of Changes
In order to accommodate the revised procedure, the USPTO is revising Form PTO-1595
and EPAS to allow the public to indicate that the assignment document serves as an
oath or declaration under 37 CFR 1.63.
Changes in Burden
The proposed revisions of these forms will not result in a substantive change in the
burden for this collection. The changes will have no effect on the estimated annual
responses or estimated time per response for the revised forms.

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