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Managing the Changes to the Oath or Declaration Requirement: The Effect of the Leahy-Smith America Invents Act Oath or Declaration Change on Corporations

On March 16, 2013, the requirements for an inventor’s oath or declaration filed with a U.S. patent application changed. Unlike non-continuing applications filed after March 16, 2013, these changes to the oath or declaration require assignees to contact inventors of previously-filed applications and ask them to execute a new oath or declaration that meets the new requirements when filing essentially all continuing applications for applications filed prior to March 16, 2013. This Article examines the impact of this change on patent applications assigned to corporations. The Leahy-Smith America Invents Act (AIA) became law on September 16, 2011. This statute has introduced many substantial changes to patent law. The most widely recognized change was the United States switching from a first-to-invent system over to a first-inventor-to-file system, thereby more closely aligning with the first-to-file system followed by the rest of the world (note that the United States still allows a limited grace period for some early disclosures prior to filing that are not allowed in first-to-file jurisdictions). Under the first-inventor-to-file system, all new applications filed after March 16,