Justification for Nonmaterial/Nonsubstantive Change for 0651-0032

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE
United States Patent and Trademark Office
Initial Patent Applications
OMB CONTROL NUMBER 0651-0032
(September 2012)

Background
The United States Patent and Trademark Office (USPTO) is submitting this request to
update information collection 0651-0032, “Initial Patent Applications.” The USPTO is
submitting 21 new forms in this collection related to the inventor’s oath or declaration
and application data sheet:
(1)
(2)-(11)

(12)-(21)

Application Data Sheet 37 CFR 1.76
Declaration (37 CFR 1.63) for Utility or Design Patent Application using an
Application Data Sheet (37 CFR 1.76) (PTO/SB/AIA01), translated into
Chinese, Dutch, French, German, Italian, Japanese, Korean, Russian,
Spanish, and Swedish
Substitute Statement in Lieu of an Oath or Declaration for Utility or Design
Patent Application (35 U.S.C. 115(d) and 37 CFR 1.64) (PTO/SB/AIA02),
translated into Chinese, Dutch, French, German, Italian, Japanese,
Korean, Russian, Spanish, and Swedish

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, and permit a
substitute statement in lieu of an oath or declaration in certain circumstances. 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.
The USPTO currently provides forms for the inventor’s oath or declaration (PTO/SB/01,
PTO/SB/02), which provide applicants with a simple way to make the averments and
provide the inventorship information required by 35 U.S.C. 115 and 37 CFR 1.63. The
USPTO has revised the inventor’s oath or declaration requirements in view of the
changes to 35 U.S.C. 115 in the AIA and in response to feedback from the public to:
(1) require only averments required by the AIA’s 35 U.S.C. 115(b); and (2) permit
applicants to provide inventorship information (the names of all of the inventors) on an
application data sheet rather than the inventor’s oath or declaration.
The averments required by 35 U.S.C. 115(b) are that: (1) the application was made or
was authorized to be made by the affiant or declarant; and (2) the individual believes
himself or herself to be the original inventor or an original joint inventor of a claimed
invention in the application. These averments differ somewhat from pre-AIA 35 U.S.C.
115, which requires that the applicant aver that he (or she) believes himself (or herself)
to be the original and first inventor of the process, machine, manufacture, or
composition of matter, or improvement thereof, for which he (or she) solicits a patent,

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE TO 0651-0032
(continued)

and state of what country he (or she) is a citizen. These averments are pre-printed on
the inventor’s oath or declaration forms (and the substitute statement forms).
The USPTO currently provides a form for the application data sheet (PTO/SB/14). The
USPTO is providing a revised application data sheet in view of the option to supply
inventorship information via an application data sheet, rather than on the inventor’s oath
or declaration. This change does not affect the information that is required, but only
how it is provided (formerly the USPTO required that it be provided in the inventor’s
oath or declaration, and the revised rules permit it to be provided either in the inventor’s
oath or declaration or on an application data sheet).
The USPTO is also providing substitute statement forms, which are applicable if the
inventor is deceased, is legally incapacitated, cannot be found or reached after a
diligent effort was made, or has refused to execute the oath or declaration. Under
pre-AIA 35 U.S.C. 115, the applicant would make the oath or declaration required of an
inventor in these situations. Under the AIA’s 35 U.S.C. 115, the applicant provides a
substitute statement rather an oath or declaration with respect to an inventor in these
situations. The information provided on the substitute statement was required by the
pre-AIA regulations (37 CFR 1.47, 1.63 and 1.64) pertaining to an oath or declaration
that is executed by an applicant who was not the inventor.
The changes to 35 U.S.C. 115 in the AIA do not apply to applications filed prior to
September 16, 2012. Thus, the USPTO plans to provide new forms for the inventor’s
oath or declaration for use with applications filed on or after September 16, 2012, but
still continue to make the existing inventor’s oath or declaration forms (legacy forms)
available until applications filed prior to September 16, 2012, are no longer pending
before the USPTO.
Summary of Changes
In order to accommodate the revised procedure, the following forms are added to this
information collection as follows:

Translations of PTO/SB/AIA01: Declaration (37 CFR 1.63) for Utility or Design
Patent Application using an Application Data Sheet (37 CFR 1.76): The USPTO is
providing translations of this form for utility and design patent applications. This form is
for applicants who wish to supply inventorship information via an application data sheet,
rather than on the inventor’s oath or declaration. The forms contain the inventor’s oath
or declaration averments required by 35 U.S.C 115(b) (with enough identifying
information to ascertain who is executing the oath or declaration and the application to
which it pertains) translated into the Chinese, Dutch, French, German, Italian,
Japanese, Korean, Russian, Spanish, and Swedish languages.

Translations of PTO/SB/AIA02: Substitute Statement in Lieu of an Oath or
Declaration for Utility or Design Patent Application (35 U.S.C. 115(d) and 37 CFR 1.64):
The USPTO is providing translations of this form for utility and design patent

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JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE TO 0651-0032
(continued)

applications. This form permits the applicant to either supply inventorship information
via an application data sheet, or use the Substitute Statement Supplemental Sheet
(PTO/SB/AIA11) to supply inventorship information. The forms contain the inventor’s
oath or declaration averments required by 35 U.S.C 115(b) and the statements required
by 35 U.S.C. 115(d) for a substitute statement (again with enough identifying
information to ascertain with respect to whom the substitute statement is executed and
the application to which it pertains) translated into the Chinese, Dutch, French, German,
Italian, Japanese, Korean, Russian, Spanish, and Swedish languages.

PTO/SB/14: Application Data Sheet (37 CFR 1.76): The USPTO is providing
this revised form for use in provisional applications under 35 U.S.C. 111(b),
nonprovisional applications under 35 U.S.C. 111(a), or national stage applications under
35 U.S.C. 371. The revised form permits the collection of both inventor information and
applicant information, except that the applicant information should not be completed if
the applicant is the inventor (or the remaining joint inventor or inventors under 37 CFR
1.45).
Changes in Burden
The proposed addition of these 21 forms will not result in a substantive change in the
burden for this collection. The 21 new forms proposed to be added to this collection
require only information that is currently collected via this collection (e.g., via forms
PTO/SB/01, PTO/SB/02, PTO/SB/03, PTO/SB/14).
Changes in Needs and Uses
The USPTO will provide demographic information collected on the forms associated
with this information collection to the Census Bureau in order to receive from the
Census Bureau generalized and non-applicant-specific statistics on the diversity of the
USPTO’s user community. Section 29 of the Leahy-Smith America Invents Act (Pub.L.
112-29 (2010)) empowers the USPTO to study the diversity of patent applicants.

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