The vast majority of BIO’s members are small and medium sized enterprises that currently do not have products on the market. However, all of our members actively file for patents and often pursue both out-licensing and in-licensing business models. As such, the implementation of seemingly simple provisions such as the Oath or Declaration provisions can have a large impact on the day-to-day business of our members.
Surely, in light of the AIA, the USPTO need no longer engage in inquiries that attempt to measure the sufficiency of assignee effort, and could instead rely on the assignment document as objective proof of the assignee’s plenary right to “make an application for patent.”
BIO appreciates the magnitude of the PTO’s task of implementing the America Invents Act, and applauds the transparency and consistency of its outreach efforts since the day the Act was signed into law. While BIO is reluctant to embrace the proposed Oath and Declaration Rules in their current form for the reasons stated above, we optimistically look forward to continued dialogue on the matter.